[Added Later: I forgot to hyperlink earlier to this post by Shamnad on whether a delay in the filing of a Power of Attorney prejudices patent/trademark applications or not. There’s a fascinating discussion between commentators in this regard, some of which may have to be re-assessed in view of this newest circular that has been issued.]
This tiny but crucial procedural circular relating to the submission of Power of Attorney documents issued way back in June appears to have missed the attention of the IPO website manager. It is the only office circular that is not be seen on the home page of the IPO website. My first question, of course, is why this is so? – Is it a deliberate strategic oversight? Or is it an inadvertent uploading/CMS error?
According to the circular, “Patent and Trademark applications may be accepted if the forwarding letter contains a request for filing the power of attorney within a period of one month.”
If you’re wondering, like some of my friends were, as to where this circular is hidden, I invite you to wander around the IPO website, and reach the Office Circulars page (Home Page >> Resources (left frame) >> Notice Board >> Officer Circulars), where you chance upon Circular No. 12, issued on 26 June, available as a download here.
The circular appears to have been prompted by the great deal “of doubt and confusion on the question of power of attorney to be attached to Patent and Trademark applications.” The IPO awaits a “clear cut” circular issued by the Controller General on the matter, until when the procedure mentioned here shall be followed.
There appears to be some concern over the stipulation of the one-month period for filing PoAs. In part, it imposes procedural limitations where none appear to exist, as neither the Acts nor the Rules (for patents and trademarks) explicitly specify time durations within which such documents have to be filed. Procedural practice appears to be that the documents are filed once they are received from clients.
A secondary concern appears to be the pressure such a regulation is going to create on applications filed on behalf, particularly, of international clients. Balancing the demands of establishing international standards in prosecution with the vagaries of traditional modes of communication is a tough act. Could the IPO have done better had it kept in mind such extrinsic challenges?
I say this not in criticism of the regulation, which I believe is a good thing, but in sympathy for applicants (and representatives of applicants), who may have to deal with circumstances beyond their control in submitting such documents, for whom some leniency may be appropriate.
Meanwhile, my concerns about the “Interactive Guidance” offered by the IPO for Patents and Trademarks appear to have gone unanswered. If the notes of the anonymous commentator on my previous post on this issue are to be believed, like so many others, I await to see if the CG will issue a circular on this too, soon.
I am working as an Examiner of Trade Mark in New Delhi Registry and I went through the news article “IPO’s Latest Note On PoAs” and the original office circular regarding allowing the period, temporarily, within which Attorney has to file Power of Attorney .
The same topic was discussed earlier and, I think, it is subsequent to that discussion the circular No:12 has been issued.
So far as Trade Marks Act, 1999 is concerned it expressly, under Rule 36 and under the heading of DEFICIENCIES, says that;-
‘’subject to sub rule (2) of rule 11, where an application for registration of a trade mark does not satisfy the requirement of any of the provisions of Act or rules, the Registrar shall send notice thereof to the applicant to remedy the deficiencies and if within one month of the date of the notice the applicant fails to remedy any deficiency so notified to him, the application may be treated as abandoned’’
The Trade Marks Registry is not following the same as laid down in Rule 36. Instead, the examination report sent along with the search report insists, under sub rule (5) of rule 38, to provide any submissions within a month for the objections raised and any other conditions (including non filing of Power of Attorney) mentioned in the examination report.
If C.G. wants to curtail the lengthy process of sending a separate notice under Rule 36, it is desirable to take the examination report, in which one month time is provided to comply with, as notice under Rule 36 also.
But, If we take the examination report and the time specified in it to comply with under sub rule (5) of rule 38 as a notice under Rule36, then Advocates can take more time than as specified under Rule 36 as well as it would defeat the very purpose of Rule 36. Because, the application for trade marks is examined more than an year after it was actually filed and it takes a few months for dispatch.
Even though an applicant/Attorney submits his submission or reply to examination report and along with file the PoA within a month, it is not being properly, followed in Indian Trade Marks Registry, put up in the concerned application. It comes to the notice of both the hearing officer and the Applicant/Attorney at the time of hearing. The applications are accepted or Advertised, by setting aside the requirements filed under the Acts/Rules or showing the copy of the same by the Applicant/Attorney to the hearing officer at the time of hearing.
While the reply to examination reports (PUC) are not being put up properly in the concerned application, how can an Application/Attorney believe that the PoA filed by him has been put up properly.
Entirely contrasting to the rule 36, which is not being followed even the period is specifically mentioned, the other area where there is no time limit is specified is Rule 119. (T.M. 46 for certified copy) Taking advantage of this lacunae, the person in charge of T.M. 46 may demand some favour from Applicant/Attorney. C.G. needs to look into this issue seriously.
A Regular Examiner in Kolkatta T.M.Registry has accepted a mark “FAT BASTARD” in Class 33 and the same was published in the Journal also.
The other day, in a function organized by FICCI, our C.G. thundered that he would change the IP Office into international standard. With officers like “Fat Bastard’’ I don’t think he can make it into a local standard.
No functional change would happen unless the attitude of working employees and other officers of Trade Marks Registries are changed.
This is a good forum for examiners and employees of IPO to express their opinions and also expose the corrupt elements in the organization.Keep up the good work.
Dear Anon#2: I agree. This is a good forum to understand how the IP administration works. The laws and the rules are one thing, but the implementation of these are quite another, and poses its own unique challenges.
Anon#1: Thank you for your detailed response to the post. I am aware also of the lengthy discussion that took place in response to an earlier post on the blog on a similar matter. It is evident that the circular was prompted by the absence of strict procedure being followed. And solely in that regard, it may be reasonable to expect the CG to impose a temporary procedural regulation to this effect. Somebody has to take responsibility to crack the whip on lacunae, as you call it, and the CG would be the most appropriate person. What will be more interesting in the future is to see (a) whether it is indeed strictly followed by current practitioners; and (b) how this procedure might evolve, since the regulation is, after all, temporary.
Meanwhile, I am curious to know why you bring up the issue of “Fat Bastard” in this context. Is it connected in anyway? or do you choose to present it as a specific example of the administrative processes that are followed in the IPO?
In any event, I look forward to your response.
Salut! (hic)