Some of the suggestions and objections are general and may not have bearing to the draft Amendment Rules but to prevailing Patent Law/ practice/ procedure. Nothing wrong in earning more revenues but there are other ways through which they can earn. One would be fee for expedited examination of Patent Applications.
As forwarded to 'chandni.raina@nic.in' (chandni.raina@nic.in) on Fri 14/06/2013 11:15 AM
My
objections are as follows:
No plausible
reason has been provided for such steep increase in official fee when the
Indian Patent offices are lagging in delivery of services. It takes 4-5 years
for a Patent to be examined in India and by each passing year the pendency is
increasing. Though there is no examination for 4-5 years from date of filing of
request for examination, there is no extension provision if deadline for 48
months for filing request for examination is missed. When no apparent
examination is to happen immediately after filing request for examination (and
in fact it takes 4-5 years thereafter) , there should be provision for late fee
or extension for filing request for examination. The increase in fee should
come with accountability in services and a definite time frame should be
provided for examination of the Application. Similarly an onus should be cast
on Examiner to respond to any response to examination report within a fixed
time or the response should be deemed to be appropriate and the Application
should be granted within a definite time frame. This increase in fee works only
for Govt. as Patents are Granted usually in their 6-8th years and
without getting any exclusive rights over the Patent, the Patentee is to pay
annuity for such period. There should be a provision for extension of term of
Patent where the Patent was not examined timely (within 6-12 months) of filing
request for examination.
The above draft
amendment in Rules does not take into consideration the additional Govt. fee
suggested under earlier draft Patent Amendment Rules 2010 where for some of the
services (for which no fee is due as of now) e.g. filing of sequence listing of
nucleotides and/ or amino acids. The fifth schedule that was proposed to be
added under earlier draft Patent Amendment Rules 2010, there is no indication
of fee for same here. Similarly in view of these draft amendments some of the
provisions of draft Patent amendments Rules 2011 would be redundant and
proposed amendments under those draft rules 2011 would be brought afresh especially
concerning the formatting part of documents.
The draft rules
propose to add 10% surcharge for filing forms/ documents under physical mode.
This is adding salt to injury. The e-filing platform is redundant as it
supports only two banks namely SBI and Axis bank, therefore it
cast a negative obligations for Applicant or its Agents/ Attorneys to have an
account with said banks and only if they are capable of using the internet
banking facility of those banks, they can file the Application or forms, where
fee is payable. No. of banks have not been increased since last many years and
this surcharge is nothing but to give monopolistic advantage to those two banks
and Patent office. Even the income tax department has come to accept payment by
no. of banks. In this age of plastic money there is no provision as to make
payment by credit or debit cards.
USPTO is far
more ahead when it comes of supporting e-filing system. They don’t require
digital signature for filing documents, all they require is clean scanned copy
of duly signed document. They accept payment by credit cards as well as
Attorneys hold account with USPTO and all they have to do is provide a
confirmation in writing (by electronic mode) to charge their account for due
amount.
Levying such surcharge
when the system supports bank accounts of only two banks is restrictive and
arbitrary. The patent office should allow payment of fee through all banks that
have been allowed license by the RBI and should not pick and choose and
discriminate against any bank and their customers.
My
suggestions are as follows:
-
Increase in fee should corresponds to answer-ability and accountability in Patent Prosecution which can be achieved in
following manner
(A)
Patent Examination time frame to be brought to
within 6 months from date of filing of Examination
(B)
Ensuring automatic publication of applications
after 18 months, so that grant is not delayed for want of publication
(C)
Allowing late filing of request for examination,
with subject to monthly increasing extension fee (to ensure timely compliance
and at the same time, not to take away rights of Inventor/ Applicant for
missing a deadline)
(D)
Adjusting the term of Patent where there is delay
in examination of application within a stipulated time frame (within 6 months
from filing request for examination)
(E)
After filing of response to examination report,
there should be a definite timeline within which the Examiner should respond
otherwise the objection should be deemed to have been withdrawn. 12 months
deadline is maximum period available to Applicant, not to patent office.
-
Surcharge for filing documents physically should
be done away with till more banks are made part of e-payment gateway, The
surcharge should be levied only after increasing the no. of banks.
(A)
The no. of banks through which payment could be
made should be enhanced, all leading private and nationalized banks should be
made part of payment portal
(B)
Even payment should be allowed by Credit/ Debit
cards
-
If E filing is coming into picture, the patent
office based jurisdiction or application no. should be done away with. The
examination report can be send by email to the Applicant/ Patent Attorney or by
post by centralized Examination unit. If after considering the response, the
Examination unit is still not convinced, they should mark case to any office of
the Applicant/ Attorney choice and the Examiner of concerned unit/field therein
should be allowed to discuss the invention/ objections with the Applicant/
Attorney and even hearing could be held with the Controller of said Patent
office. This will bring uniformity in Patent examination, and time frame of
examination would become identical across all Patent offices. This process is
being followed for Trademark matters where examination is carried out at Mumbai
TM Registry but afterwards reply to examination report and hearing etc. the
Trademark Office is same where application was filed (cases are allotted from
Mumbai TM Registry).
