Kshitij Malhotra
The patent office published the latest Manual of Patent Office Practice and Procedure (accessible here and at the link below). For those who are unaware about patenting procedures, all major patent offices across the globe maintain a patent practice manual that details various practices to be followed by the patent office staff (examiners) at various stages of the patent process, right from filing of a patent application till the patent renewals. Though, the manual is essentially an internal document, various patent practitioners, including patent lawyers, attorneys and agents follow the manual as a sacrosanct guide regarding the patent office practices.
The latest manual is a discernable event in the patent office drive to streamline the practices at the patent office because of various reasons. Firstly, since 2005, the Indian patent office has seen a considerable increase in the number of patent applications filed at the office, partly attributed to the radical changes brought by the 2005 amendment, and partly attributed to the integration of the Indian economy in the world economy. The number of patent applications filed every year at the office has gone up a crazy 250 percent in last five years. From around 17,500 patent applications filed at the patent office in 2004-2005 to around 40,000 patent applications filed in 2009-2010. However, the increase in the number of patent application has also resulted in a backlog of patent applications. Some figures suggest that 80,000 patent applications are pending approval at the Indian patent office. Therefore, considering that the patent office is battling a herculean task in vanishing the backlog and the crunch of prudent examiners, the new manual will provide a helping hand from one of the important stake holders in the process, the patent attorneys/agents, when it comes to filing new applications at the patent office. The manual will go a long way in elaborating the guidelines that are required to be followed in the patent process. A patent application adhering to standards acceptable at the patent office is half the job done involved in obtaining a patent.
Secondly, it should be understood that the patent process is a long drawn process involving plurality of non-extendible deadlines that have to be religiously followed to obtain a patent. The stakes for obtaining patents are reaching mammoth proportions, with companies (both domestic and MNCs) pumping Lakhs of Rupees in obtaining patents on their envisaged blockbuster innovation. It will be surprising to know that the official fees for a company applying for a patent is minimum 14,000/- Rupees, with the official filing fees easily extending to 50,000/- Rupees in many cases. With the stakes reaching such proportions, these companies expect the patent office to be transparent. The new manual will go a long way in improving the transparency of the process, as what goes inside the closed doors of the patent office is documented and public.
Thirdly, lately the patent office has been at the receiving end of the wrath of various High Courts regarding ambiguous practices adopted by various stake holders sometimes misusing the patent office practice to the advantage (What it means is that gone are the days, when patent lawyers/agents/attorneys can file a whimsical patent application and use their cronies to get the patent granted). For example, in Snehlata Gupte Vs. UOI & Others, W.P. (C) No. 3516 of 2007, the Delhi HC has abolished the practice of exploiting post grant opposition mechanism, and sorted out the issue of date of grant of patent applications. In Telefonaktiebolaget LM Ericsson v Union of India, WP (C) 9126/2009, the Delhi HC looked into the issue of ‘deemed abandonment’ of a patent application under Section 21(1) of the act, and took the patent office to task for abandoning patent applications on unjust grounds. Other decisions in this regard are Nokia Corporation V. Deputy Controller of Patents and Designs (W.P. No.2057 of 2010) and NIPPON STEEL CORPORATION V. UNION OF INDIA (W.P. (C) 801 of 2011) blogged by us here. Therefore, there was an imperative need on behalf of the patent office to come up with guidelines as provided now under the manual as soon as possible, and the new manual will do just that.
Regarding the content of the manual, the best part is that the manual is available in HTML format along with the PDF format. The availability in HTML version ensures that the manual is easy to search, and more importantly provides ready access to various contents of manual through a normal Google search. Apar and I wrote to the patent office requesting the patent office to make available the manual in HTML format, and seems the patent office took notice of the same. Further, the manual is bifurcated into various chapters based on the events in chronological order. Importantly, the examination and grant chapter enlists the core requirements that the invention needs to fulfill before being considered as novel and inventive. Another important observation is the elaboration of section 3, i.e. inventions not patentable, and specifically elaboration of the much debated section 3 (d) and 3 (f).
Manual of Patent Office Practice and Procedure
Our Email to the Patent Office Responding to the Invitation to Comment on Proposed Draft of the Manual
Dear Sukhdeep,
At first, we would like to congratulate you for a wonderful revision of MPEP. The revised MPEP is concise, and very well presented. Surely, depicts efforts you and your team have invested in the revision. Based on our perusal of the MPEP, we have following suggestions/comments on the MPEP. Please feel free to contact us if you need any clarifications on the suggestions/ comments.
Suggestions/Comments
1. Attention is drawn to section 03.04.01 of the MPEP (Content of Patent Application). It is stated that “Declaration as to inventorship shall be filed in Form 5 for applications accompanying a provisional specification or a convention application or a PCT application designating India.” We believe that this is not entirely correct. We believe that Form 5 is required to be filed only when a complete specification is filed. Accordingly, it is not mandatory to file Form 5 along with the provisional application. In support of the same, we would like to draw your attention to section 10 (6) of the Indian Patent Act, 1970 read in light of rule 13 (6) of the Patent Rules, 2006.
2. We request the patent office to include details regarding the procedure of fees submission while filing a PCT application with IPO as the receiving office. The MPEP only provides brief details about the official fees in section 07.02.05. Therefore, a detailed description regarding calculation of fees, and submission of fees with timelines be helpful.
3. Detailed description is also required regarding procedures for ascertaining Novelty (08.03.03), and Inventive Step (08.03.04). Both these topics are complex, and we feel that the description provided in the MPEP is very basic. We believe that there may be additional tests etc applied by patent examiners while determine novelty and inventive step. Accordingly, additional information regarding the same would be helpful.
4. In section 11.01.02, a special note should be made of appeal arising from pre-grant oppositions u/s 25 (1) and abandonment u/s 21 (1). There is still confusion among practitioners and patent office alike regarding scope of appeal lying u/s 117A of the Indian Patent Act. It should be made clear that decisions of controller u/s 25 (1) [pre-grant oppositions] are appealable to IPAB based on the ratio of UCB FARCHIM V. CIPLA [WP 332, Delhi HC, 2010], and the appeals against decisions of controller u/s 21 (1) are not appealable to the IPAB based on the ratio of Accenture Global Services GmBH and BT Group Inc v. Controller General of Patents.
5. Last but not the least, we request you to upload an HTML version of the MPEP on the patent office website. The html version is easy to search, and more importantly provides ready access to various contents of MPEP through a normal google search.
Congratulations again for coming up with a much better version of MPEP! Keep up the great work.
Regards,
Kshitij Malhotra
