Reforms in the Intellectual Property regime in India has been underway both judicially and administratively. The Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) has been constantly working towards advancing the government's efforts to streamline IP processes, increase IP awareness and promote commercialisation.
Patents:
Since 2016, all IPO (Indian Patent Office) branches have undergone upgrades, and IT infrastructure-related services have been put in place to speed up IP application processes, cut down delays, make administrative processes more transparent, and allow data sharing with applicants and the public. In 2018, the IPO integrated WIPO Digital Access Services (DAS) and WIPO Centralized Access to Search and Examination (CASE) in its examination modules under the WIPO-INDIA Cooperation Agreement.
The IPO, playing its role as International Searching Authority (ISA), had also started to share full search strategies along with the International Search Reports (ISR) on WIPO´s Patentscope as a result of the commitment to the international quality requirements. It has also added the e-sign facility in addition to the current digital signature facility to further streamline and simplify the patent filing process[1].
A Centralized Classification Team has been recently constituted to classify and assign a patent application to an Examiner of the relevant field. This would minimise reallotment requests by Examiners/ Controllers and ensure proper, timely distribution and smooth disposal of patent applications with quality search reports[2].
Impact[3]:
- Filing of patent applications has increased by 24.64%, from 66440 in 2021-22 to 82811 in 2022-23.
- Patent granted for patent applications have increased by 13.5%, from 30073 in 2021-22 to 34134 in 2022-23.
- Average pendency of patent applications at first examination level has been reduced to less than 12 months from the date of request of filing of request for examination (RQ) in all fields of technology.
Trade marks:
Trade marks filing has been streamline under the Madrid Protocol to improve the registration of international trade marks in India. To simplify the search process, the Online Search Facility for Classification of Goods and Services for Trade Marks has been updated. Applications are now automatically distributed for examination in chronological order of filing date[4].
The trademark registration process has been automated in order to prevent delays caused by the previous manual process of sending registration certificates. Consequently, following the deadline for publication, the Registration Certificates are automatically processed, sent to the applicants' specified email addresses, and uploaded to the Trade Marks Registry's Electronic Register (TMR). This modification has significantly benefited the applicants as well as lowered the pendency at this point to less than one month[5].
Furthermore, the process of renewal has also been automated, by which a renewal request gets processed and the validity date gets updated[6]. All Show Cause Applications hearings have been converted entirely to video conferencing mode in order to facilitate the stakeholders and further streamline the processing of Trade mark applications through extensive use of information technology. This has increased the efficiency of processing trade mark applications and has given stakeholders the option to attend hearings from their place of business or residence at their convenience.
Impact[7]:
- There was an increase in the filing of trademark applications from 447805 in the year 2021-22 to 466580 in 2022-23.
Design:
Significant improvements have been achieved with respect to the e-filing tool and updated design applications to enhance functionality. Additionally, the submission of priority documents using the WIPO-DAS code was actively encouraged, and hearings through telephone and video conferencing (VC) are implemented.
The last amendment in Designs Rules came into force from January 25, 2021, that incorporated a new category recognized as 'Startup' which in case of an Indian entity is recognized as so by the competent Authority under Startup India Initiative and in case of a foreign applicant, an entity fulfilling the criteria for turnover and period of incorporation or registration as per Startup India Initiative and submitting declaration to that effect.
Moreover, sub-rule (1) under rule 10 of Design Rules has been substituted and articles for the purposes of the registration of designs and of these rules, are being classified as per current edition of 'International Classification for Industrial Designs (Locarno Classification) published by World Intellectual Property Organization (WIPO)'.
E-register of Designs has been made available to public.
Impact[8]:
- Pendency in examination of new applications has been brought down to one month from the filing date.
- An increase of 53.33% and 52.65% was observed in registration and overall disposal of design applications, respectively in the year 2022-23.
Copyright:
The Copyright Office too has made remarkable efforts to improve its operations through digitisation, reengineering of the registration processes, augmentation of staff, and website updates. The Copyright Office has started displaying applications received during the month, as well as disposal and pendency on the official website in order to further increase transparency and stakeholder participation, and to give applicants the ability to track the status of their applications online. The status of applications submitted, registrations granted, and the ability to search registered work are all displayed on a dashboard. To enable simple registration of works, one can now upload soft copies of literary, dramatic, and artistic works along with other pertinent documents on its online portal.
The Copyright Office is currently working to be easily accessible to the public online. To prevent the public from visiting the office, steps are being taken to conduct the hearing in copyright matters virtually. Additionally, steps are being taken to enable the public to submit correspondence online, with the goal of saving time and money while also quickly resolving issues.
Copyright Office has introduced the provision to upload soft copies of Literacy/Dramatic and Artistic works along with other related documents on its online portal to facilitate seamless registration of works.
ICT Infrastructure and Functional Improvement in IPO:
- The office of CGPDTM has initiated steps to upgrade the Data Center to latest technology in order to improve speed of processing and public service delivery.
- To maintain the security and owner privileges, an OTP based Authentication system has been developed to access control of internal software applications for processing of IP applications.
- New Portal has been designed for conducting Patent Agent Examination and Trade Mark Agent Examination which enabled the applicant to check his/her application status during the complete procedure in a smooth manner.
- A provision to generate online certificates on the grant of a design application has been provided to switch from manual work to digitalize the procedure.
- The IPO also put in place a feedback mechanism in the form of regular meetings with its stakeholders, such as legal representatives, businesses, or any interested parties to understand and resolve procedural and technical issues related to amendments in IP rules, reengineering procedures, module-based workflow, and more[9].
Intellectual Property Division (IPD):
After the Intellectual Property Appellate Board (IPAB) was abolished[10], it marked a significant shift in the IP practice as all matters pending before the IPAB were transferred to the respective high courts[11].
The Delhi High Court and then the Madras High Court, has created a separate IPR division. The Delhi High Court Intellectual Property Rights Division Rules, 2022 and the High Court of Delhi Rules Governing Patent Suits, 2022 came to be notified, which lay down the rules that govern the IPR jurisdiction in the Delhi High Court[12]. Madras High Court IPR Division Rules have also been published in the Tamil Nadu Government Gazette on April 5, 2023[13].
Initially, two benches of the High Court of Delhi were exclusively dedicated to hearing all IPR subject matters. More recently, a third bench has been created given the large volume of IPR cases before the court[14].
The drastic shift from IPAB to High Courts, have been a positive change for IPR jurisprudence. All IP cases come under the meaning of commercial cases, and thus have strict timelines and procedures that aim to shorten litigation. Furthermore, it is seen that a IP related judgements are more streamlined and consistent thereby smoothening the IPR regime in India. India’s prominence in the global stage, increased IP filings and increased IPR litigation, are a testament to the developing IPR landscape of the country.
[1] IPO Annual Report 2021-22, https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_Annual_Report_Eng_for_Net.pdf
[2] IPO Annual Report 2022-23, https://www.ipindia.gov.in/writereaddata/Portal/IPOAnnualReport/1_114_1_ANNUAL_REPORT_202223_English.pdf
[3] IPO Annual Report 2022-23,
[4] IPO Annual Report 2022-23,
[5] IPO Annual Report 2022-23,
[6] IPO IPO Annual Report 2022-23,
[7] IPO IPO Annual Report 2022-23,
[8] IPO IPO Annual Report 2022-23,
[9]http://ipindia.gov.in/writereaddata/Portal/News/454_1_Issues_raised_and_Suggestions_received_in_Stakeholder_Meeting_held_on_03-08-2018_at_IPO_Delhi_.pdf
[10] On April 4 2021, the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 (later replaced by the Tribunals Reforms Act, 2021) was promulgated, which abolished the Intellectual Property Appellate Board (IPAB).
[11] https://www.managingip.com/article/2aoxdrzghl7fpb3f1ce80/sponsored-content/game-changer-the-intellectual-property-division-of-the-high-court-of-delhi
[12] Ibid
[13]https://www.legal500.com/developments/press-releases/madras-high-court-intellectual-property-division-ipr-division-rules/#:~:text=Following%20the%20recommendation%20of%20the,relating%20to%20Intellectual%20Property%20Rights.
[14] https://www.managingip.com/article/2aoxdrzghl7fpb3f1ce80/sponsored-content/game-changer-the-intellectual-property-division-of-the-high-court-of-delhi
Details
- Publication date
- 6 May 2024
- Author
- European Innovation Council and SMEs Executive Agency