A Law Student’s Account of Attending the Virtual Open Houses of the CGPDTM: Part I

Everyone would agree that administration and case management are essential for the overall functioning of any judicial or quasi-judicial institution. However, as straightforward as it may sound, accomplishing these fronts is not an easy feat. Various posts on this blog have highlighted different aspects positive and negative across the years, with the most recent example being this blogpost by Mr Raja P. Selvam here. So how are the authorities responding on this front? Readers may recall that in May 2023, Niyati posted on the official announcement to hold “Open House Sessions” on weekdays from 4:30 PM to 5:30 PM, to “address grievances/suggestions on issues related to Intellectual Property Rights.” We are very pleased to bring to our readers a first-person account of CGPDTM’s recent Open House Sessions by a very enthusiastic SpicyIP intern Anshuman Kar, in form of this two-part post. Anshuman is a third year law student at National Law University, Odisha. He shares a keen interest in Patent related issues and wishes to discover more in the field of IP. In part I, Anshuman discusses the ‘Open House’ sessions on Patents (June 7) and Designs, GI and Copyright (June 9) and part II of his post will discuss the session on Trademark (June 12) along with his takeaways.  We are sure that our readers will enjoy Anshuman’s take on these sessions, but would also love to hear from them, about their own experiences from these sessions, in the comments below.

A Law Student’s Account of Attending the Virtual Open Houses of the CGPDTM: Part I

Anshuman Kar

Late 2022 saw a very positive move for transparency and accountability in the Indian IP landscape when the Controller General’s Office decided to conduct Open House Sessions to address grievances that applicants and stakeholders may have. Later, in May 2023, it was announced that these sessions would be conducted on a daily basis.  As per the official announcement, the Open House sessions are for “seamless and direct communication with the applicants and stakeholders on various IP related issues.” The sessions are divided into three segments to address a variety of issues throughout the week, with Mondays and Wednesdays reserved for Patent related issues, Tuesdays and Thursdays reserved for Trademark related issues, and Fridays for issues related to Designs, Copyrights & Geographical Indications, and are held from 4:30PM to 5:30PM on working days.

As one of the assignments for this internship, I was able to witness three such sessions. Over the course of this post I will write out my observations as a law student, on the proceedings of the three sessions that I attended virtually.

Patent: Session on June 07, 2023

The Panel

The session was conducted by the Office of the CGPDTM, with the panel being presided over by Dr. Dinesh P. Patil (Joint Controller of Patents & Designs & Head of Office, O/o CGPDTM), Sh. N R Meena (Sr. Joint Controller of Patents & Designs, Head-Patent Office, Kolkata), Sh. N K Mohanty (Sr. Jt. Controller of Patents & Designs, Head-Patent Office, New Delhi), Sh. C N Shashidhara (Jt. Controller of Patents & Designs, Head- Patent Office, Chennai). The session had a turnout of roughly 8-10 IP Practitioners getting their issues addressed on that day.

Issues Raised

While it would be inaccurate to generalize the variety of issues raised based upon a single day’s observation, here are some issues that did stand out:  

1. Most of the issues raised that day related to expediting dates of hearings. A predominant problem persisting in the realm of patents in India appears to be the generous amount of time taken to conclude proceedings, keeping relevant procedures in mind. On occasions, such delay in addressing patent issues have been raised by the courts wherein oppositions have been blamed to be a prime delay maker in grant of patents. However, at a glance, it seems that merely completing procedures takes up a significant amount of time. I saw an example of this even in the session I sat in on, wherein a practitioner representing their client approached the Panel with the issue of not being able to obtain a next hearing date after adjournment of proceedings previously.
2. Rectification of technical errors and updates in correspondence addresses and contact details was another of the issues pointed out by a number of practitioners.
3. Technical queries by practitioners related to filings and regarding relevant forms to be filled while filing for patent applications.

Reflecting on the Session

Upon being approached with relevant queries and issues by practitioners, the officials engaged in dialogue and seemed eager to cater to the problems that were being brought into light. While the intricacies of most issues were not discussed vividly over the session, most issues were discussed at least in brief. The officials made sure to take note of the aggrieved patent holders and enquired the names of the respective controllers who were involved with the matters in dispute. Further, formal communication of these grievances was asked to be sent to the Office of the CGPDTM through e-mail, based on which further action would be taken.

Designs, Copyright and GI: Session on June 09, 2023

The next session that I attended was on Designs and GI. During this session, the officials addressed a plethora of issues raised by the practitioners, though only related to designs and copyright, and none on GIs. These ranged from technical issues related to filings, to administrative issues from the side of the office of the CGPDTM, and general queries raised by those attending the session.

The Panel

The panel comprised of Dr. Pritpal Sidhu (Deputy Registrar of Copyrights), Dr. JK Pradhan(Dy. Controller of Patents & Designs, Head- Designs Wing) and Mr. Sanjay Bhattacharya (Deputy Controller of Patents & Designs). The session had a turnout of roughly 5-6 IP Practitioners.

Issues Raised

As mentioned, the office addressed a number of issues, out of which a few were resolved immediately, while others were acknowledged in the session, with hopefully some redressal coming soon. I shall highlight a few of them below:

• In one issue related to trademark, a practitioner put forward their problem of not being able to receive an No Objection Certificate (NOC). Addressing this the Deputy Registrar asked them to send an email to the office of the CGPDTM. Interestingly, by the time the session ended, the practitioner reported that their issue was resolved, and that they had received their NOC.

• In another issue related to copyrights raised by a firm, it was reported that all the necessary documents were filed by the applicant in the copyright office, yet a no discrepancy letter was issued to them by the same, due to which they could not get their copyright enforced. This matter was taken into cognizance and the office directed the applicants to write to them via email.

• In another design related issue, an attendee reported that the office had accepted their application but no certificate was provided to them. Upon cross checking their application number the office reported that the issue arose out of a technical reason and assured that the issue would be resolved.

•  In certain instances, clarifications were also provided. One, wherein a query on the system of filing applications was raised where the participant had asked whether there was a necessity for filing the original General Power of Attorney as asked by the website for subsequent applications, and another query regarding Form 24 was raised related to the case of MSMEs, asking why in case of MSMEs, the form had to be originally signed by the applicant.

Answering these queries, Dr. Pradhan stated for the first query that filing the same once, would be enough, and clarified that filing scanned copies for subsequent applications will suffice.

Shedding light on the second issue, he stated that original documents were not required and that scanned copies of such forms were enough.

• Additionally, a common issue faced by a number of practitioners was raised, that identification in case of FERs was a hassle since there were no specific numbers or dates mentioned in the same, and hence filing replies to specific FERs becomes difficult. Acknowledging this, Mr. Pradhan said that he understood this issue and was with the practitioner in the same and assured that  the issue would be looked into in detail.

• In the final issue of the day, a matter related to designs was raised, wherein the applicant reported excessive delay from the side of the office. The applicant had filed their reply to the Examination Report, to which no response was received, which was causing delay in further proceedings. The office cited shortage of staff as a reason for the delay, and asked the applicant to write an email, upon which the issue would be looked into.

Reflecting on the Session

It has to be noted here once again, that the open house sessions seem useful in that there is some sort of acknowledgement, at the least, of on-going issues. While the larger systemic changes to make these processes flow smoother may require bigger types of action, it hopefully provides, at the least, a forum where grievances can be recognised. It is to be noted though, that the frustration of some practitioners dealing with repeated systemic issues has occasionally been seen through these sessions. So while conducting these open house sessions is certainly a positive step, it may indeed require the quicker addition of the bigger systemic changes to ensure that the frustrations don’t overwhelm the well intentioned open-house sessions. And the session on Trademarks that I attended next, highlighted this even more starkly.

In Part II of the post, I will discuss the Open House Session on Trademarks on June 13, 2022, followed by my general takeaways.

Please note: Some inadvertent errors that had been made have been corrected thanks to feedback in the comments section below.