The Indian Jungle – an IP perspective, part 2

In Insights, Uncategorized

10 March, 2015

To foreign applicants filing a patent application in India takes place “at the IPO”, but in reality there is a choice of venue which is not trivial. The Indian patent office (IPO) is headquartered at Kolkata (formerly known as Calcutta) with branches in Chennai (formerly Madras), New Delhi and Mumbai (formerly Bombay). The office of the Controller General for Patents and Trademarks is located in Mumbai, a city regarded as the commercial capital of India (Delhi being the actual capital). The four branch offices are fully functional, so once an application is filed with a particular office it normally stays there throughout the life of the application. Foreign applicants can choose where to file, no matter which Indian associate they work with, but as most Indian patent agents are located in the Delhi area, most foreign applications are by default filed with the Delhi patent office, as this is most convenient for the patent agent.

There is presently a huge backlog of unexamined patent applications at the IPO which means that it takes ~4 years before an applicant receives the first examination report. Due to differences in staffing and workload the Mumbai office is however almost 2 years ahead of the Delhi office and 1 year ahead of the other two offices. Secondly, there is a difference in the way the Indian Patent Act and case law is followed at the four offices. Thus the Delhi and Chennai patent offices are unkindly referred to as “pharma application graveyards”. The Kolkatta office is regarded as the best place to file mechanical and automotive applications, whilst the Mumbai office is best equipped to handle pharma, biotech and computer science applications. Applicants who need a speedy prosecution should thus consider filing in Mumbai, especially if their application falls under the pharma, biotech and computer science areas.

Disclosure formalities

The IPO imposes very extensive disclosure (IDS) requirements. The IPO thus requires that information regarding any related foreign applications to be filed periodically with the IPO. The time period within which the applicant is required to notify the IPO regarding any related foreign application is currently six months. In addition the applicant is required, within six months of receipt of communication to that effect from the Controller, to furnish information relating to objections or rejections in respect of novelty and patentability during prosecution of corresponding applications elsewhere. Not furnishing this information is one of the grounds of invalidation of a patent. The disclosure requirements can be complied with by scheduling six-monthly filings in Form 3 with details of prosecution progress of related applications elsewhere.

Compulsory licensing

The compulsory licensing provisions according to Indian law are contingent on a determination: (a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or (b) that the patented invention is not available to the public at a reasonably affordable price, or (c) that the patented invention is not worked in the territory of India. In 2012 India granted its first compulsory license ever to the Indian pharmaceutical company NATCO against Bayer Corporation. Natco cited the high cost of treatment using the drug Nexavar (sorafenib tosylate) in their application. The above example is thus far the only compulsory license being granted.

Summary

India’s IP laws can be seen as a balancing act between on one hand a desire to fully comply with WTO/TRIPS requirements and on the other providing affordable medicines to its vast numbers of poor people. India however also offers exciting opportunities in the electronics, automotive and computer science areas where the quickly growing Indian middle class wants access to new, imported products which should be protected by patents, designs or trademarks. Please contact Awapatent if you need strategic advice on how to protect your IP rights in India!

Michael Bech Sommer, European Patent Attorney

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