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I had recently filed a RTI Application with the DIPP to collect information on the backlog of certain specific proceedings before the Patent Office and the Trademark Registry. The application was transferred to the office of the CGPDTM and the replies from his office indicate a daunting backlog which is going to be impossible to clear with the present staff, especially at the Trade Marks Registry.
Given below are the figures of some of the pendency rates, if you are interested in detailed year wise breakups, please access the entire reply (available over here):
(i) Pending pre-Grant Oppositions under Section 25(1) of the Patents Act, 1970: 835
(ii) Total number of pre-Grant Oppositions disposed in last 5 years: 144
(iii) Pending post-Grant Oppositions under Section 25(2) of the Patents Act, 1970: 156
(iv) Total number of post-Grant oppositions disposed in last 5 years: 68
(v) Pending applications under Section 69 of the Patents Act, 1970 for recording of assignments of patent: 1,127
(vi) Pending oppositions under Section 21 of the Trade Marks Act, 1999: 135,874
(vii) Pending rectification applications under Section 57(1) of the Trade Marks Act, 1999: 878
(viii)Total number of opposition and rectification petitions disposed under Section 21 & Section 57(1) in the last five years: 21,978
(ix) Pending applications under Section 40 of the Trade Marks Act, 1999 for recording of assignment of trademarks: 37,569
A. Pre-grant and Post-grant opposition before the Patent Office: It is interesting to note that the pre-grant opposition mechanism which was almost done away with by the government in the 2005 amendments, is much more popular than the post-grant opposition mechanism. Contrast these figures for the year 2010-2011: 294 pre-grant oppositions versus a mere 29 post-grant oppositions.
The current pre-grant opposition mechanism, while necessary, is also open to abuse because of weak procedural safeguards. The standard strategy is to keep filing representations through different sister companies or employees so as to delay the hearing for as long as possible. Patentees with strong patent applications are made to suffer through these delays and in worst case scenarios the grant of a patent can be delayed by years together. We had blogged about such abuses of the pre-grant opposition mechanism over here. I’m guessing that at least 5-10% of the pre-grant oppositions are bogus.
What I also find interesting in these numbers is the fact that they do not seem to be consistently increasing every year. Conventional logic would determine that as patent filings go up, even pre-grant and post-grant oppositions filed every year would go up. However that does not seem to be the case. If anything pre-grant oppositions have shown wild variations. While in 2009-10 these oppositions were at 103, they spiked to 294 in the subsequent year and then fell to 193 in the next year.
B. Rectifications and Oppositions before the Trade Marks Registry: Moving on to the Trademarks Registry, the situation appears to be serious. In fact ‘serious’ would be an understatement. If anything the situation is suicidal. Apart from the mounting number of trademark examinations, the 5 Trade Marks Registries are faced with a cumulative total of 135,874 i.e. one hundred thirty five thousand eight hundred and seventy four only! Unlike mere examination of trademark applications, oppositions take up significant resources of the trademark registry because such oppositions can be conducted only by Registrars and each hearing can take up to a few hours. Therefore while technology can ease the examination process to a considerable extent, trademark oppositions necessarily need a fixed number of man-hours. As per the latest figures with me there are only 15 Registrars. How exactly will they tackle 135,874 oppositions while also granting trademark registrations on the side.
In addition, the Trade Mark Registry also has the responsibility to hear applications under Section 57 for rectification of the trademarks register. This includes the power to cancel registered trademarks. There are around 878 applications under this section pending before the Registry. Please note that even the IPAB has the power to dispose such applications. Like the petitions under Section 21, these petitions also take up considerable man-hours since hearings have to necessarily be conducted by a Registrar.
The disposal rate of oppositions has been directly proportional to the strength of the trademarks registry. For example in the year 2009-10 when the trademarks registry was working at a mere 17% of its total strength, the number of oppositions disposed plunged to a mere 983 from 4703 for the previous year.
C. Recordal of assignments in the Register: Apart from oppositions and rectifications and of course examination, the Patents Office and the Trade Marks Registry also have important miscellaneous functions such as recording the transfer of ownership in patents and trademarks through licensing and assignment agreements.
Recording such transactions in the patents and trademarks registers is critical not only from the point of greater transparency but also from the viewpoint of business transactions. In certain cases the assignee of a trademark or patent cannot himself sue for infringement until such assignment is recorded in the register. Also trademarks are being used increasingly as collateral with banks for the purpose of raising loans and working capital and it is absolutely pivotal for such businesses to have a timely recordal of their assignment deeds in the register without which banks are apparently not prepared to grant loans.
According to the RTI Reply, the Trademark Registry has a pendency of over 37,659 applications under Section 40 of the Trade Marks Act while the Patent Office has a more manageable 1,127 applications pending before the Registry.
D. The future challenge: The main reason for these huge backlogs at the Patent Office and the Trademark Registry is the crippling lack of staff. I had blogged about these shortages over here. As per the last RTI reply from the DIPP, the Trade Marks Registry was working at a strength of a mere 40 examiners and 15 registrars against a sanctioned strength of 86 examiners and 36 registrars. Even if the Trade Marks Registry were to be functioning at its sanctioned strength, it would still be doubtful whether they would be able to tackle the backlog.
The situation at the Patent Office is slightly better given that they have recently recruited at least 248 patent examiners. However of these 248, only 185 have been officially notified on the Patent Office website. Where have the remaining 63 patent examiners gone? However, even without these 63 patent examiners, I think the patent office is much better equipped to handle the increasing pile of patent examinations and oppositions, once these examiners are trained and the existing examiners are promoted to the post of Controllers.
The biggest challenge therefore for the new CGPDTM Chaitanya Prasad will be to convince the DIPP to drastically increase the strength of the trademark registry beyond the current levels.
Apart from increasing the strength the CGPDTM must seriously think of convincing the DIPP to amend the Act to transfer post-grant oppositions of patents and rectifications of trademarks to only the IPAB which already has the power to handle both types of proceedings. It simply makes no sense to vest the same powers in two different institutions. Just transfer everything to the IPAB and upgrade the IPAB with more benches to hear such matters. The Patent Office and Trade Marks Registry should focus exclusively on the administrative process of granting patents and trademarks rather than judicial functions such as post-grant oppositions and rectification of trademarks.
This post raises important issues. I believe there are other aspects of the backlog and inefficiency as well, for example:
1. It takes one and a half to two months for a communication to be sent from any of the patent offices, even after the communication is issued from the department concerned. For example, a filing can be done in person and and receipt obtained immediately. If you send the application by post, a receipt will be generated but it will take a minimum of a month to a month and a half before the receipt is sent to the applicant.
2. There are questions of procedure as regards 18-month publication. It is not clear what criteria are being followed – it is sure that many applications are not being published on time and are being arbitrarily delayed. We came across such a case recently – a 2010 June application is yet to be published. Also, I observe the Journal Patent has separate pages for 18-month publication and publication on special request, but we see recent applications published in the pages where there are supposed to be 18-month publications. Further, old applications are being published dated 2009 sometimes. For example, 1387/CHE/2009 A was published on Jan 6, 2012. I am not sure what is going on here.
3. There seems to be no assurance that if you write to the patent office, you will receive a response or any action within a predictable period of time. Particularly so if you are requesting certified copies or even just copies.
Hi Shankar,
Thanks for your comment. I think a lot of the problems you’ve pointed out have simple solutions. It just requires the will to implement them.
Could you give us some example of patent applications getting published in the ‘special request’ section.
Lastly, could you please provide us some of the vague time-frames within which you’ve received certified copies from the patent office?
Prashant
Prasanth,
I had talked to an insider in Patent Office he says that most of the delay take place due to manpower shortage and mistakes take place because of CONTRACT workers who cannot be accounted for the mistakes take place. Everybody in IPO says the recruitment should take place every year not every five years. But prasanth your RTI should have relived more details i think you had kept those for other posts in the Blog.
Dear Prashant, 23rd May, 2012
I have always been praising you about your blogs that you have been writing from time to time. It is very nice that you have got such vast information from the DIPP concerning the Patent and Trade Mark Office in just one RTI application.
More detailed information is still wanting from the trade mark office and more particularly from Delhi Office. As per Rule 49 (7) of Trade Marks Rule 2002, the notice of opposition is required to be ordinarily served to the applicant within three months of receipt of the same by the appropriate office. Similarly under Rule 49 (1) of Trade Marks Rule 2002, the Registrar shall ordinarily serve the counter statement to the opponent within two months from the date of receipt of the same.
The aforementioned Rules have been often violated by the trade mark office more particularly the Delhi trade marks office. Until recently the oppositions which were filed as back as in the year 2005 were not served and that they have now only started serving the oppositions and perhaps they have covered the service of the opposition up to date 2007-08. Similar is position with counter statement.
The applications under Section 40 of Trade Marks Act for recordal of assignment are pending for the past more than 15 years and now when the Trade Mark Office Delhi has started working on it, frivolous kinds of objections are been sent. In fact there is a negative attitude of the trade mark officials for allowing the requests.
Opposition which have matured for final hearing as back as in year 2005-06 and pending to be heard. Several applications which have been ordered to be advertised are pending for more than 3-4 years and are not been advertised for the reason best known to the trade mark officials. In short it can be said that practically the work has come to a stand still.
A new thing has be started by the trade mark office wherein, in case there is change in the counsel/advocate/agent for renewal they are asking for TM 50, whereas TM 50 is not attracted in these proceedings. But then it has been learnt that our previous Controller General has very strictly instructed to officers to insist upon TM-50 or let the person objecting to it approach the court and get orders to the contrary. Several registrations were removed on account of not filing of renewal fee even though the office did not comply with the mandatory requirements of issuing and serving notice in Form – O3. Seeing stiff resistance, a scheme was introduced with the following aim-
A. Earning money for the Government.
B. Saving itself from the writ petitions directing the trade mark office to restore and renew the trade marks illegally removed.
The attitude of trade marks office with respect to these petitions is negative and most of the applications are refused on flimsy grounds.
The plight the applicant is that now after the said refusal order having been passed by the Trade Mark Office, he can not approach to the High Court in writ petition and that he as to approach the IPAB and sell out another sum of Rs. 5000/- as the fee of appeal and then it is not known when appeal will be taken up by IPAB and with what result.
You have stated that the assignee of a trade mark can not himself sue for infringement until that assignee is recorded in the register, is wrong. The law is that the assignee becomes the owner of the trade mark, the moment the assignment deed is executed. There are several judgments on this point starting from AIR 1992 Delhi page 4 in the case of Modi Thread.
A question, in case you have some insight to it. We’ve filed several trademark applications (not patents) related to agriculture for a local farmers club. Now virtually every one of these has been challenged – we’re not sure by whom and on what grounds. The immediate response seems to be to call for a hearing which requires re-presentation and adds to the cost (and delays) for the trademarking (a year since the hearing and we are still waiting).
What is the new twist in the process that is causing this – and how can it possibly make sense for any business (especially small ones)?