We are pleased to bring to you a guest post by Vijaykumar Shivpuje. Vijay is a Patent Agent and an IP consultant. He brings with him more than 12 years of experience in IPR with multi-national pharma organizations and is also the owner of “VPATAPP”, a mobile app designed for patent professionals. He can be reached at [email protected]
A Patent Application Published 20 years After Its Filing in India
Indian Patent Office published around a total of 41,000 (yeah, you read it correctly) patent applications in the following three journal issues in 2016:
- Journal dated, 1st July 2016;
- Journal dated, 26th August 2016;
- Journal dated, 31st August 2016, which was a special issue.
While analyzing this large number of applications, it was found that not all of these applications were filed only 18 months back. Many of these applications were filed years ago but were not published earlier for reasons best known to the Patent Office.
One such interesting case is highlighted below along with its analysis:
The application 327/MAS/1996A was filed in India on 30th May, 1996. The PCT filing date was 29th March, 1996. This application got published only on 31st August, 2016. That’s correct! 20 years after filing of the application. That means, after expiry of the precribed term of the patent (if granted).
A snapshot of the same can be viewed here.
Now let’s look at the statutory requirement in respect of publication of patent applications in India:
Patents Act, 1970:
“Section 11A. Publication of applications:
(1) Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.
(2) The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of subsection (3), the Controller shall publish such application as soon as possible.
(3) Every application for a patent shall, on the expiry of the period specified under sub-section (1), be published, except in cases where the application –
(a) in which secrecy direction is- imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified under sub-section (1)
Patent Rules, 2003:
24. Publication of application:
The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier.
Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.
24A. Request for publication:
A request for publication under subsection (2) of section 11A shall be made in Form 9.”
So, in a nutshell, as per the Patents Act and Rules, every patent application is required to be published after expiry of 18 months from the date of filing or priority of the application (whichever is earlier). However, as stated above, there are various applications that were filed between 1996 and 2016 but were published only in the aforementioned three journal issues in 2016.
Warning to all the patent searchers: Look out for these three journal issues for the Indian patent applications which were published only now but filed long back. What would be the course of action if you have actually cleared an invention for which your searches did not reveal any existing equivalents? I could actually trace a few applications which were really critical for the FTO (freedom to operate) analysis for some of the products cleared earlier.
- Why was this application never published earlier?
- What made the patent office publish this application after such a long gap?
- What message India as a country and Indian patent office wish to give to the world by this kind of publication after 20 years?
- What about the privileges and rights of the applicant under Section 11 A(7) of the Patents Act?
- What should be the timeline after which we can presume that no equivalent of an invention claimed in a particular patent application is available? Or do we need to wait till the expiry of the 20 years like in this case?
I would like to know expert comments on the significance of this publication or similar examples elsewhere in the world.
Disclaimer: The opinions and comments in this post are personal.
Image from here