Indian Patent Office

From Wikipedia, the free encyclopedia

This article needs additional citations for verification. Please help improve this article by
adding citations to reliable sources. Unsourced material may be challenged and removed. (June
2012)

The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs &
Trade Marks (CGPDTM). This is a subordinate office of the Indian government and administers the Indian
law of Patents, Designs and Trade Marks.
Contents
[hide]

1 Patent administration
2 Amendments to the Patents Act
3 Patent duration
4 Geographical Indications tags
5 Criticism
6 Modernization
7 References
8 External links

[edit]Patent

administration

The CGPDTM reports to the Department of Industrial Policy and Promotion(DIPP) under the Ministry of
Commerce and Industry and has five main administrative sections:

Patents

Designs

Trade Marks

Geographical indications

Patent Information System

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai, but the
office of the CGPDTM is in Mumbai. The office of the Patent Information System is atNagpur.
The Controller General, who supervises the administration of the Patents Act, the Designs Act, and the
Trade Mark's Act, also advises the Government on matters relating to these subjects. Mr. P.H.Kurian was
the first IAS officer to serve as Controller General. Mr Chaitanaya Prasad has assumed charge as
CGPDTM recently.Under the office of CGPDTM, a Geographical Indications Registry has been established
in Chennai to administer the Geographical Indications of Goods (Registration and Protection) Act, 1999.
The Indian Patent Office has 75 Patent Examiners, 70 Assistant Controllers, 7 Deputy Controllers, 1 Joint
Controller, and 1 Senior Joint Controller, all of whom operate from four branches. Although the designations
of the Controllers differ, all of them (with the exception of the Controller General) have equal authority in
administering the Patents Act.
The controversial promotion of many Examiners as Assistant Controllers has further led to an imbalance in
the set-up of the Patent Office, thereby disrupting the normal functioning of the organization. There are now
more supervisors (Controllers) than workers (Examiners).[1][31].
An Indian Patent Examiner is mandated to search for prior art and for objections under any other ground as
provided in the Patent's Act, then to report to the Controller, who has the power to either accept or reject
Examiners' reports. Unlike the system at the USPTO /EPO/JPO, Examiners at IPO have only
recommending power and the controllers are empowered by statute either to accept or refuse their
recommendations.(Sections 12 -15 of the Patent's Act, page 100,Item 8.04.10 of Patent office manual).
This means that only Controllers have the power to grant or refuse patents in India. Examiners' reports to
the Controller are not open to the public unless courts allow it (section 144 of the Patents Act). A
Parliamentary committee has recommended repealing S144 [32].
Examiner attrition seems to be issue with the Office.[2][3] Despite the attrition the number of first office
actions have increased from 2004-05 probably due to increased output from the Office. [4] Ex-Controller
General, Mr. P.H.Kurian, in an interview, had promised time-bound promotions to Officers and recruitment
of new Examiners. This may mitigate the crisis of lack of officers and the problem of attrition due to low pay
and lack of promotion, if implemented. There are around 75 examiners who have been languishing in the
same post without promotion for over 8 years from 2003 onwards. [5] Many highly qualified (some of them
have international reputation for their research and academic attainments) examiners have left the Indian
Patent Office as the IPO could not provide a good work environment.[6][7][8][9][10] Corruption, nepotism and
bribery within all level of staffs and officers in the Indian Patent Office (particularly Mumbai, Delhi and
Kolkata) and the Department of Industrial Policy & Promotion, Government of India are prevalent
strong coterie-driven politics persists within the atmosphere of the Patent Office

[11]

. A very

[12]

However the promise made by the former CGPDTM was not kept and is leading to a bigger crisis of mass
attrition by newly recruited examiners (recruitment based on only an examination, the candidates were
never interviewed by neither the Patent Office nor CSIR) who were recruited by the HR wing of CSIR after

spending huge amounts of exchequer's money. CSIR charged 4-5 Crores INR for conducting the selection
examination. Out of the announced 257 posts only less than 135 selected candidates have expressed
interest to join. Among those who joined, many have already submitted their resignations and still more are
waiting in the wings to resign soon. This is an indication of the deep malaise within the system which is
being ignored or covered up silently.[13][14]
A recent report of a concerned government official has recommended outsourcing of search in view of
increased work load. IPO has started to outsource prior-art searches violating the stipulations of the
prevailing Patents Act [33].
According to Indian newspaper Mint, Indian patent examiners have the world's highest workload and lowest
pay (Rs 46000 p.m entry level pay for a fresher as on 14/6/2012) . While a patent examiner in the
European Patent Office would handle less than seven patent applications per month and a USPTO
examiner would handle eight applications per month, an Indian examiner reportedly handles at least 20
applications a month. However an Indian examiners monthly salary is less than a third of his/her
counterparts in other foreign patent offices.[34] The Department of Industrial Policy & Promotion under the
Ministry of commerce, Government of India has come out with a discussion paper in order to address the
issues plaguing the Indian Patent Office. Granting financial and administrative autonomy, Separation of
Patent and Trademark offices, setting up of additional offices are some of the issues put forth for input from
stakeholders.[15] There are few strong and constructive comments based on the existing set-up of the
Patent Offices in India. One very strong and constructive comment is written by Dr. Arijit
Bhattacharya

[16]

who was an Officer of the Indian Patent Office. Such strong and constructive comments

citing empirical evidences are very rare in the history of the Indian Patent System. However, Government of
India and its Secretaries seem to be reluctant on the issues of corruption, bribery, nepotism and internal
politics. On the issues of upliftment of the Indian Patent Office no action has been adopted by the Ministry
of Commerce or the Department of Industrial Policy & Promotion by way of stopping the menace of
corruption, nepotism, bribery and internal politics.

[edit]Amendments

to the Patents Act

Amendments (in 1999, 2002, 2005, 2006) were necessitated by India's obligations under TRIPS, allowing
product patents in drugs and chemicals. Another important feature was the introduction of pre-grant
representation (opposition) in addition to the existing post-grant opposition mechanism. The pre-grant
representation has had success in a short span. One example is the abandonment of a patent application
by Novartis on Glivec (Imatinib Mesylate), revoking the earlier granted EMR on the same drug used to treat
Leukemia.[17]
A controversial provision of this amendment was on software patent-ability, which was later withdrawn in
another amendment (Patents Act, 1970, as amended by Patents (Amendment) Act, 2005). It is clear from
the legislative history and interpretation of provisions in the Patent Act, 1970 (as amended in 2005) that the
Patent office should not allow intrinsic patent-ability of computer programs. [18] But there is evidence

suggesting that the Patent office has acted otherwise. [18] Patent Rules 2003 were amended in 2005 and
again in 2006. Some of the important features of both the 2005 & 2006 Rules are the introduction of
reduced time lines and a fee structure based on specification size and number of claims, in addition to a
basic fee.
'Though clause (k) of Section (3) of the Indian Patent Act holds computer programmes 'per se' or
algorithms as non-patentable, technical 'application of software' or 'software combined with
hardware'[19] including embedded systems, may be granted patent' according to R S Praveen Raj,
former patent examiner from Indian Patent Office.

[edit]Patent

duration

Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether
it is filed with provisional or complete specification. However, in case of applications filed under PCT the
term of 20 years begins from International filing date (See No.41 of FAQs on Indian Patent Office website).
[20]

[edit]Geographical

Indications tags

Further information: List of Geographical Indications in India

India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of
Goods (Registration & Protection) Act, 1999 has come into force with effect from 15 September 2003. GIs
have been defined under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual
Property Rights(TRIPS) Agreement as: Indications which identify a good as originating in the territory of a
member, or a region or a locality in that territory, where a given quality, reputation or characteristic of the
good is essentially attributable to its geographic origin. [21]
The GI tag ensures that none other than those registered as authorised users (or at least those residing
inside the geographic territory) are allowed to use the popular product name. Darjeeling teabecame the
first GI tagged product in India, in 2004-05, since then by September 2010, 132 had been added to the list,
this include, Salem Fabric, Kancheepuram Silk Sarees, Madurai Sungudi Sarees, Bhavani
Jamukkalam, Coimbatore wet grinders, Bikaneri Bhujia from Rajasthan, Guntur Sannam chilli, Tirupati
Laddu,[22] Hyderabadi haleem and Gadwal sarees from Andhra Pradesh,Nashik valley
wine, Mahabaleshwar strawberry and Paithani sarees from Maharashtra, Kinnauri shawl from Himachal
Pradesh, Kasaragod sarees and Kuthampully sarees from Kerala, Sandur Lambani embroidery and Kasuti
embroidery[23] from Karnataka, and Banarasi brocades and sarees and hand-made carpet from Bhadohi in
Uttar Pradesh.[24][25]
Other GI patented items from Karnataka include: Ilkal sarees, Channapatna toys, Hoovina
Hadagali jasmine, Monsooned Malabar coffee, Monsooned Malabar Robusta Coffee and Coorg Green
Cardamom, Molakalmuru sarees, bronze ware, Navalgund Durries, Mysore Ganjifa cards, Mysore silk,
Mysore agarbathis (incense sticks), Bidriware (metal design), Mysore rosewood inlay, Mysore sandalwood

oil, Mysore Sandal Soap, Mysore traditional paintings, Coorg orange, Mysore betel
leaf, Nanjangud banana, Mysore jasmine and Udupi jasmine.[21]
All the items with GI tags are listed below:

[hide]Stat
e

Items

Andhra
Pradesh

Guntur Sannam chilli, Tirupati Laddu, Hyderabadi haleem and Gadwal sarees

Himachal
Pradesh

Kinnauri shawl

Karnataka

Sandur Lambani embroidery, Kasuti embroidery, Ilkal sarees, Channapatna toys, Hoovina
Hadagali jasmine, Monsooned Malabar coffee, Monsooned Malabar Robusta Coffee
and Coorg Green Cardamom, Molakalmuru sarees, bronze
ware, Navalgund Durries, Mysore Ganjifa cards, Mysore silk, Mysore agarbathis (incense
sticks), Bidriware (metal design), Mysore rosewood inlay, Mysore sandalwood oil, Mysore
Sandal Soap, Mysore traditional paintings, Coorg orange, Mysore betel leaf, Nanjangudbanana,
Mysore jasmine and Udupi jasmine.

Kerala

Kasaragod sarees, Kuthampully sarees, Mattu Gulla

Maharashtra

Nashik valley wine, Mahabaleshwar strawberry and Paithani sarees

Rajasthan

Bikaneri Bhujia

Tamil Nadu

Salem Fabric, Kancheepuram Silk Sarees, Madurai Sungudi Sarees, Bhavani

Jamukkalam, Coimbatore wet grinders

Uttar Pradesh Banarasi brocades and sarees and hand-made carpet from Bhadohi

West Bengal

Darjeeling tea

The Venkateswara temple in Tirupati,Andhra Pradesh, Indias richest temple, scored a sweet legal victory:
the Geographical Indications Registry upheld its claim of a GI registration over the famous Tirupati laddu.
The Registrys order granting the GI tag was, earlier, challenged by R S Praveen Raj, a scientist with CSIRNIIST.The registry issued the verdict, upholding TTDs claim and fined Praveen Raj Rs 10,000

[edit]Criticism

[26]

As per An Indian patent Attorney in a Leading IP magazine, patents which were beyond the Act were
granted by the Office.[27] The Indian Patent office seems to have unusually high grant rate (refer to page 14
of the patent office annual report[28] for the year 2005-06 in respect of numbers of refused patent
applications), compared to other major patent Offices (EPO annual report for 2006, p22), and indicates the
complete failure of the "well established" quality assurance systems covering the patent granting
procedures.[29] The reason behind this is attributed to the fact that a majority of patent applications filed in
India are PCT National Phase cases which have an International Search/Examination report. Therefore it is
easy for Controllers to decide on granting a patent for the application.This is not the case in well
established Patent offices of developed countries where a majority of the applications are local(ordinary)
applications. Here a search has to be carried out and based on the documents recovered during this
search, the final outcome of the application is decided. Hence there can be no comparison with the number
of cases examined and granted in India and abroad. Further, the monthly target for Indian examiners is 16
new applications per month (in addition to amended applications and other responsibilities) as compared to
a maximum of 5 abroad. More importantly, the Indian Patent Office strictly has only 12 months to
grant/refuse the application as compared to foreign patent offices where applicants can extend the final
date indefinitely.
Knowledge commission, an Indian govt appointed body has recommended measures regarding the
functioning of the Office.[30] However these recommendations have not been implemented till date.
Recently the patent grant of a pharma drug has attracted attention. [31][32] It should also be noted that the
Patent office has not come up with final guidelines (Manual of Patent Practice and Procedure). It is unclear
whether the patent office is still revising its draft manual which is kept for public inspection since 2005. A
Delhi high court judgment has found that the Indian Patent Office has followed a lowered inventive step
criterion (TSM method)in respect of a cancer drug patent.
The patent office is also not enforcing the rules and regulation mentioned in the act.
According to the section 24 of patent act "The period for which an application for patent shall not ordinarily
be open to public under sub-section (1) of section 11A shall be 18 month from the date of priority. The
controller shall publish the application in the Journal shall ordinarily be one month from the date of expiry of
said period, or one month from the date of request for publication under rule 24-A"
The rules are un-clear and there is no fixed action stated. The word "shall" is been used as a protection
shield by the Patent office and has never published any of the application within one month from the date of
request or expiry of said period. This is one of the examples, many more can be listed. It seems to be that
Patent Office is biased.[citation needed]
Generally, the time taken by the Indian Patent Office (IPO) to grant a patent is around 34 years from the
date of first filing. US Attorneys are behind USPTO to reduce the 2 years period taken by the USPTO.

A very constructive criticism and subsequent evidences of corruption, bribery, nepotism and the use of
extra-Constitutional authority of power by a set of coterie-driven officials led by senior officials of the Indian
patent office have emerged from Dr. Arijit Bhattacharya, a former Controller of the Kolkata Patent Office. [33]

[edit]Modernization
The Indian Patent Office has implemented a modernization program according to an Indian govt website.
And according to this website "Efforts have been made to improve the working of the Patent Offices within
the resources available and that the problem of backlog is also being attacked through 50% higher monthly
target for disposal of patent applications per Examiner".[34] Full text of Indian Patents are now available
along with prosecution history [35],[36]. E- Filing of Patents & Trademarks is made possible and according
to an Indian Minister the first phase of the modernization comes to an end and the Indian Patent office
wishes to be an International search Authority.[35] The second phase of modernization has been proposed
with the aim of achieving US patent examination efficiency among others. [36] Patent filings during the year
2007-08 were 35000.[37]