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Sunday, June 16, 2013

Suggestions to Draft Patent Amendment Rules 2013

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 '' ( 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). 

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