Patent Trademark

Creative Ways of Cutting Pendency: Abandonment vs Allowance?


The BRICS block (comprising Brazil, Russia, India, China and South Africa) are a major force to contend with. For these countries are seen as potential world leaders (if not already). Along with Annalisa Primi, a stellar economist, I co-authored a paper some years ago referring to these countries as “Technologically Proficient Developing Countries” (TPDCs). And hoped that some of these countries would break out of the standard IP script (driven in large part by the developed world) and carve out a set of distinctly new IP norms. Particularly India and Brazil.

It turns out that both these countries pioneered  fairly “creative” (ahem..) ways of reducing their IP pendency. Here’s how.

Brazil:

Late last year, Brazil announced that it would reduce patent pendency by simply “allowing” all the pending patent application to go through. Voila! End of pendency. What could be a better strategy than this? But there is a bit of nuance to this and some riders. As a blog article (interestingly called “Bricwall”) notes:

“In July 2017, the Brazilian government stated that it was considering an emergency measure authorizing INPI to automatically grant approximately 231,000 pending patent applications by 2020.  Although the announcement of this “automatic” grant has been highly controversial, INPI has implied that it has few, if any other options for dealing with the current backlog. Interestingly, some examiners are threatening to go on strike against the measure.

The emergency measure involves a simplified examination procedure in which INPI would automatically grant any unexamined applications that do not have any outstanding annuity payments due and do not have pre-grant submissions filed by parties against the granting of the patent.  Pharmaceutical applications or divisional applications where the parent application has not yet been examined, are excluded from the measure.”

(Update: Per Prof Shadlen’s comment in the comments section to this post, this is a mere announcement and the Brazilian patent office is yet to operationalise this creative cutting strategy).

And now over to India….

India:

Around two years ago, India piloted a problematic programme of deemed “abandonments”. As leading IP attorney Ameet Datta noted in a guest post for us:

“In an inexplicable move that will potentially have a devastating effect on thousands of trade mark owners and applicants and lakhs of trade marks, the Trade Marks Registry in India has deemed (if the reports are correct) about 5,00,000 Trade Mark applications as “abandoned”. This “bulk abandonment” or culling has come about in relation to the examination of applications to register trade marks.”

He then went on to ask:

“Is this overnight culling a result of the pressure from the World Intellectual Property Organisation on the Trade Mark Registry to speed up the examination process? Apparently the Registry had fallen behind and was not meeting the 18 month time period mandated for Madrid Applications. Whatever the motivation, surely the Registry can think of more conducive ways to streamline its processes rather than cull lakhs of applications and adversely affects the rights of trade mark applicants.”

Fortunately this problematic practice was stayed by the Delhi high court, as we reported here. In a rather caustic order, Justice Manmohan ruled as below:

“Keeping in view the startling figures of disposal within a short period of time as well as the serious allegations in the present writ petition, the orders of the abandonment passed by the respondents on or after 20th March, 2016 are stayed. Also, till further orders, the respondents shall not treat any Trade Mark applications as abandoned without proper notice to an effected party as provided under Sections 21, 128 and 132 of the Trade Marks Act, 1999.”

Does anyone know the latest in this case? I am also given to believe that despite the Delhi high court order staying this creative culling of TM applications, the Indian Patent and Trademark Office continues to resort to the same chicanery.

Can someone in the know please update us? Thanks!

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

6 comments.

  1. Ken Shadlen

    The Brazilian “plan” is, as you note, an announcement of something they are considering. To the best of my knowledge it has not yet been decided if they’ll do it.

    Reply
  2. Rajan MM

    The Indian Trademark mass abandonment, as stayed by the Delhi HC, had no strong effect on the further processing of the concerned trademark applications. We have got many of them accepted when the reply to examination report has been filed even after a period of 15 months of the abandonment order (31.03.2016).

    Those who didn’t reply till date, I assume, won’t have any interest in their respective applications.

    Reply
  3. kumar

    I don’t understand why ongoing work to realize commercialization of the patent is an issue of interest. Patents are about inventions and the commercial value may not be realized for a few years, or many years. Or, the inventor may not have the money to fund commercialization.
    American patent laws do not interfere and poke their nose into such aspects. Why should indian laws requiring that be held valid? It is an invalid barrier to invention.

    Reply
  4. Sheeb

    After the mass abandonment of applications, now the Trade Marks Registry is refusing the applications in the pretext of hearing. It seems that few Hearing Officers are designated only to refuse the marks fixed up for hearing without any application of mind and no proper understanding of statutes and precedents passed by Higher Courts. The rights of the Applicants are rejected by their ignorance and wrong interpretation of Law.

    Reply

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