Patent

Nitto Denko Corp v. Union of India: Backlog and shortage of staff at the IPO?


A civil writ petition was filed by Nitto Denko Corporation, questioning the delay in the issuance of FER and seeking directions regarding timeline of issuance of first examination report (FER) and expediting patent prosecution. Mr. Pravin Anand, one of the country’s leading IP counsels represented the petitioner in this case.

The Delhi high court issued an order directing the Indian patent office to file an affidavit indicating the state of affairs in the patents office regarding issuance of FER and to disclose the year wise pendency of patent matters. Recently the court has also asked for the appointment of a 3 member committee (secretary DIPP, Chaitanya Prasad and a third party nominated by both of them) to look into whether or not all FER backlogs could be cleared within 3 years. This is a very welcome development and the court must be commended for not merely ordering that the statutory timelines be complied with. Rather, the court appoints a committee to investigate the deeper malaise underlying a patent system, where the office is starved of resources. After all, statutory timelines can only work when you equip the office with sufficient resources!

Factual matrix and timeline:

Petitioner filed a convention patent application on 1st September 2011 along with a request for examination. Subsequently on 2nd November 2011, the petitioner made a request for early publication. The patent application was published in the patent office journal on 13th January 2012. On 14th Sept and on 19th September 2012 respectively petitioner filed a status request and RTI application regarding the status of issuance of first examination report.

Interpretation of the patent act and rules:

Under Rule 24, the Controller shall publish the application in the official journal ordinarily within one month from the date of expiry of 18 months or one month from the date of request for publication. The patent application should have been published on 2nd December 2011 but was instead published on 13th January 2012, 41 days from the expiry of one month period stipulated by the Rules.

 As per Rule 24-B (iii) a first examination report along with the application and specification shall be sent to the applicant ordinarily within six months from the date of request for examination or six months from the date of publication, whichever is later. Six months from the date of request for examination would expire on March 2, 2012 whereas six months from the date of publication would expire on and the latter date being 13 July 2012 the first examination report should have been issued latest by the said date or, at least within a reasonable time thereafter. The patent office website incorrectly reflects the status of the application as “awaiting examination” but even as of today, the application for patent of the petitioner has not even been referred to by the controller to the examiner under section 12(2) of the Indian patents act; leave alone the issuance of FER!

Valid points raised in the writ petition?

• The term “ordinarily” in under Rule 24-B (iii) cannot be stretched to mean indefinitely because that would defeat the very purpose and legislative intent of the Indian Patents Act and Rules.

• The patent office is currently taking around 5-7 years to grant a patent application and these delays effectively reduce the patent term to 13 years.

• These delays are also clearly disadvantageous to the patentee since the patentee cannot initiate an action for infringement until a patent has been granted. (Section 11A(7) of the Indian Patents Act)

• Despite the presence of an express provision in the Indian patent act for early publication by paying additional fee, it does not result in early examination and is treated like an ordinary application.

• The patentee is required to pay the patent maintenance fee (u/s 142) from the third year onwards, so in effect the patentee is compelled to pay maintenance fee when the patent is still pending and not been granted and is in effect penalized for patent office delays!

• From the response to the RTI application, it is clear that the patent office officials are taking close 5 to 6 years from the date of filing of the request for examination to issue the first examination report and they are currently examining the application for which a request for examination was filed in 2008. A backlog since 2008-incredible!

Counter-Affidavit filed by Indian patent office.

Image from here

Image from here

The patent office authorities submitted that owing to shortage of resources (in terms of examiners) there is a huge backlog of patent applications and the time taken to examine each patent application varies according to complexity of technology. They also contended that the Indian patent examiners have to deal with a particularly high load compared to their US and European counterparts. They also blamed the attrition rate at the patent office for the huge pendency.The patent officials also argue that the time limit mentioned in the rules mention ordinary circumstances, but this particularly huge pendency makes the circumstances extraordinary!!

My thoughts and Conclusion:

Application awaiting examination”- now where have we heard that one before? These endless delays are not only frustrating but also jeopardize commercial interests of the applicant. While the patent office must take some of the blame for the delay, a large part of the delay arises out of the sheer shortage of resources. We are given to believe that after a major recruitment drive at the patent office where more than 200 patent examiners were appointed; almost half of them have left the IPO for better pastures within a year! The key reason appears to be the more than attractive private sector which pays better and offers better prospects for career growth and promotions. Maybe we should consider incorporating a patent term adjustment kind of system (à la USPTO) to compensate for administrative delay?

Also one can understand the delay in examination, but what is the excuse for delay in publication especially after the applicant pays additional fee? Surely publication of a patent application does not involve any complexity!

As Shamnad rightly points out and I agree, with such huge backlog and pendency problems we wonder why the Indian patent office assumed additional responsibility of functioning as an International search authority. This is an important issue affects a lot of inventors and practitioners alike and kudos to Anand and Anand for taking this up. We hope that others follow suit and raise larger issues around the resources, capacity and functioning of the Indian patent office.

PS: We will be uploading the writ petition and the counter-affidavit filed by the Indian patent office on our resources page and will be providing links very soon.

 

Madhulika Vishwanathan

Madhulika Vishwanathan

Madhulika is a registered Indian patent agent and has completed her Master’s in Pharmacology from the Institute of Chemical Technology (ICT), Mumbai. Her interests include issues involving pharmaceutical and biotechnology patent law, regulatory aspects like Hatch Waxman litigation and antitrust law.She is currently working at law firm based out of Memphis, TN.

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