Category Archives: Blog Category 2

4. Finance Minister Arun Jaitley released India’s National Intellectual Property Rights (IPR) Policy recently.

The Policy which is in compliance with WTO’s (World Trade Organisation) agreement on TRIPS (Trade Related aspects of IPRs), aims to sustain entrepreneurship and boost Prime Minister Narendra Modi’s pet scheme ‘Make in India.’ Here are the highlights:

>> The Policy aims to push IPRs as a marketable financial asset, promote innovation and entrepreneurship, while protecting public interest.

>>The plan will be reviewed every five years in consultation with stakeholders.

>> In order to have strong and effective IPR laws, steps would be taken — including review of existing IP laws — to update and improve them or to remove anomalies and inconsistencies.

>>The policy is entirely compliant with the WTO’s agreement on TRIPS.

>>Special thrust on awareness generation and effective enforcement of IPRs, besides encouragement of IP commercialisation through various incentives.

>> India will engage constructively in the negotiation of international treaties and agreements in consultation with stakeholders. The government will examine accession to some multilateral treaties which are in India’s interest, and become a signatory to those treaties which India has de facto implemented to enable it to participate in their decision making process, the policy said.

>> It suggests making the department of industrial policy and promotion (DIPP) the nodal agency for all IPR issues. Copyrights related issues will also come under DIPP’s ambit from that of the Human Resource Development (HRD) Ministry.

>> Trademark offices have been modernised, and the aim is to reduce the time taken for examination and registration to just 1 month by 2017. The government has already hired around 100 new examiners for trademarks. Examination time for trademarks has been reduced from 13 months to 8 months, with the new target being to bring the time down to one month by March 2017.

>> Films, music, industrial drawings will be all covered by copyright.

>> The Policy also seeks to facilitate domestic IPR filings, for the entire value chain from IPR generation to commercialisation. It aims to promote research and development through tax benefits.

>> Proposal to create an effective loan guarantee scheme to encourage start-ups.

>> It also says “India will continue to utilise the legislative space and flexibilities available in international treaties and the TRIPS Agreement.” These flexibilities include the sovereign right of countries to use provisions such as Section 3(d) and CLs for ensuring the availability of essential and life-saving drugs at affordable prices.

>> The policy left the country’s patent laws intact and specifically did not open up Section 3(d) of the Patents Act, which sets the standard for what is considered an invention in India, for reinterpretation.

>>On compulsory licensing (CL), India has issued only CL for a cancer drug. Mr. Jaitley said, “We rarely exercise this power.” The statement assumes significance as developed countries, including the US, have raised concerns over India issuing the CL. As per the WTO norms, a CL can be invoked by a government allowing a company to produce a patented product without the consent of the patent owner in public interest. Under the Indian Patents Act, a CL can be issued for a drug if the medicine is deemed unaffordable, among other conditions, and the government grants permission to qualified generic drug makers to manufacture it.

>> The IPR policy favoured the government considering financial support for a limited period on sale and export of products based on IPRs generated from public-funded research.

5. Delhi High Court’s Continues Stay against the Abandonment of Trademark Applications:

The Delhi High Court’s stay on the abandonment of unusually huge amount of Trademark Applications has brought relief to thousands of applicants.

The Delhi high court last week stayed as many as 193,908 orders issued by the Comptroller General of Patents, Design and Trademarks between 28 and 31 March, scrapping the trademark applications.

The Intellectual Property Attorneys Association filed a petition in Delhi and called for an urgent hearing on Tuesday, alleging that the trademark registry cancelled an unusually high number of trademark applications without issuing notices to the applicants or lawyers.

Elaborating the matter, Vedant Pujari, Patent Attorney said, “According to Section 128 of the Trade Marks Act, 1999 the Registrar of Trade Marks shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within prescribed time) giving to the person an opportunity of being heard. Further, Section 132 of the Act requires the Registrar to give appropriate notice to the applicant before passing an order to abandon the application. These provisions are under the Act and therefore are mandatory in nature.”

Pujari said such abandonment of explicably huge number of trade mark applications would not stand the test of law.

He pointed that the plea filed with the Delhi High Court said, “On March 31st alone around 52,000 abandonment orders have been passed by the Trade Marks Registry, which clearly shows there is no application of mind.”

Such hasty actions and abrupt deviation from the well-established legal procedures was surely going to come under scanner. It is strange that, instead of creating a bigger and better infrastructure to deal with the backlog in a systematic manner, the Registry is trying to get rid of the backlog in such a way, it added.

Trade Marks Registry makes the examination reports available to the applicant –

1.    Via the status update on the comprehensive e-filing module.

2.    By uploading a copy of the examination reports on the Trade Marks Registry’s database, so that the applicant can download the same and take appropriate action.

3.    By sending a notification via email to the applicant; and

4.    By sending the examination report via registered post.

The reply to the examination report is to be filed within 1 month from the date of receipt of the same. What should be considered as the ‘date of receipt’ is unclear.

Pujari said, “Being a Patent Attorney, we usually keep scanning the Trade Marks Registry’s website on weekly basis for the trade mark applications filed by us and, if available, download the examination report. This gives us ample time to prepare and file the reply to the examination report within the prescribed time.

The stay by the Delhi High Court is timely and did safeguard the interest of thousands of applicants,” he added.

In a notification, the Controller General of Patents, Designs and Trademarks said, “This office has taken steps to treat the applications as abandoned in which no reply to examination report containing office objections to acceptance of the applications for registration has been received within the period of 30 days as per Trade Marks Act, 1999 and rules made thereunder. It is pertinent to mention that in all such matters the examination reports were already posted on the official website and were also sent to the applicants or their authorised agents concerned individually.

Some complaints have been received claiming that some of the applications have been treated as abandoned even though the reply on behalf of the applicants have been submitted but the same was not considered; some complaints have also been received to the effect that the examination reports containing office objections have not been received by the applicant or their authorised agent concerned as such the same could not be replied and the applications were treated as abandoned.

In view of the above and in the interests of justice, it is decided to provide an opportunity to the applicants or their authorised agents concerned, the notification dated Aril 4, 2016 said.