The Indian Patent Office (IPO) issued three notifications on December 26, 2022. The members of FICPI-India considered the content and the implications of such impromptu notices and were of the opinion that the said notices not only put undue burden on the applicants but also could compromise the quality of examination as well as granted patents.

Said notifications broadly related to:  

1.     Public Notice No. 1: Adjournment requests with reasonable cause and documentary evidence.

2.     Public Notice No. 2: Hearing notice not more than 10 days  

3.     Public Notice No. 3: Appearances of authorized personnel before the Controller of Patents

While FICPI-India appreciated the various steps taken by the IPO towards making the IP system better, it urged the Controller General to reconsider the recent notices. It was also submitted that should the above notices remain in effect, fair, proper and effective prosecution process, which is the core of the patent grant system, may be substantially compromised.

Detailed representation was made by FICPI-India after receiving inputs from FICPI-India members and Executive Committee with respect to each of the above-identified notifications of the IPO, a gist whereof is presented hereafter.

Public Notice No. 1: Adjournment requests with reasonable cause and documentary evidence

Rule 129A of the Indian Patents Act permits the Applicant to take adjournments (maximum two) with respect to the scheduled hearing(s) by specifying reasonable cause along with payment of the prescribed fee. In view of the above requirement, the applicant will likely include a reasonable cause in the request for adjournment, which can be as simple as the Applicant requires more time to review and prepare for the matter. Granting of adjournment is at the discretion of the Controller in any case. Now, justifying reasonable cause with or without documentary evidence is an unreasonable requirement, which is not mandated by the Patent Rules and may introduce arbitrariness.

Therefore, it was submitted that enforcing additional burden on the applicant/agent to collate evidence is not required and this notification may accordingly be withdrawn.

Public Notice No. 2: Hearing notice not more than 10 days

It was submitted that curtailing the notice period for hearing to 10 days or less in view of Rule 129 was not only unreasonable but also ignores the fact that patent cases are complex matters and require extensive preparation. The most crucial expression in Rule 129 is the last word therein, i.e. "ordinarily". Considered with the fact that implementation of the entire rule is discretionary, the length of time afforded to an applicant when intimating the date for hearing must depend on whether the situation existing is ordinary or if there are any extraordinary circumstances obtaining.

It must be appreciated that while Rule 129 states “ten days’ notice of such hearing ordinarily”, Rule 129A provides a window of “not more than 30 days” and a maximum of 2 adjournments. Ten days period is bare minimum period, which must be granted to an applicant but then, a mere ten days’ notice (when the law provides leverage of up to 30 days) will cause great hardship and is liable to be considered unreasonable as the Controller has to be mindful that the Applicants are located in different jurisdictions and will require a global strategy for a given patent family.  In fact, if a 10 days’ notice is given, the patent agents/attorney in India will effectively be given 3 working days in at least some cases.

Not to forget, hearing is the last chance given to the Applicant before final disposal of a matter. Hence, the time between the notice period and hearing date is very crucial as preparing documents, technical arguments, addressing pending objections etc within such a very short duration is unfathomable. Also, imposing undue haste at final disposal stage of an application is contrary to the principles of Natural Justice in particular with the well-established principle of “audi alteram partem” and may jeopardise the rights of the Applicant/s.

In addition, the abolition of IPAB has made the IPO the last authority on the application’s fate before proceedings to any High Court begin (which are time-consuming as well as costly) and that as well imposes further responsibility on the IPO. In fact, the IPO is aware that in many instances, pending patent applications after the filing of response have been lying with the Patent Office for substantial intervals of time and that needs to be addressed more critically.

Crucially enough, the in-built stringent procedures already impose a huge burden on the Applicant to ensure compliances within the strict time frame provided by the Patent Act and Rules and therefore, further curtailing the right of the Applicant, who is entitled to a 30 days adjournment subject to payment of fee, is unreasonable.

Adjournment should not be seen as a biased weapon but as a necessary tool to allow an impartial and fair proceeding. Any abuse of process in isolated cases should not give rise to such blanket decisions which may adversely impact many stakeholders and applicants alike.

Public Notice No. 3: Appearances of authorized personnel before the Controller of Patents

Any responsible Indian patent attorneys firm will be fully aware of the statutory provisions of Section 123 (and 124) of the Patents Act, 1970. Under the provisions of the Indian Patents Act, only patent agents and advocates who have been authorised by the Applicant are permitted to appear before the Controller.  The said authorisation is provided by a power of attorney filed by the agent/law firm. Therefore, in any event, for hearings or any other proceedings before the Patent Office, agents or advocates who are not authorised through a power of attorney cannot appear or appear subject to filing of a power of attorney.

In so far as Advocates appearing before the Controller are concerned, as long as a power of attorney is on record, there is no requirement under the law (Section 132 (b) Of Patents Act or otherwise for the said Advocate to also be accompanied by the Applicant or party concerned.

Follow-up with the administrative members of the Patent Office is necessary. It is not always possible for authorised patent agents/advocates to engage with the Patent Office or staff thereof. Such follow-ups can include glitches in the e-filing module, updating of the electronic filing module for payment of fee, uploading of documents, correcting the status of a case on the patent office website for further processing, checking status of certified copies, status of review petitions, status of foreign filing licences and many more. Therefore, a Central System for all four jurisdictions (email and phone) should be created in order to ensure streamlining of the communication (two-way communication) process with the Indian Patent Office.

Update/way forward  

Following the submission of the detailed representation, a meeting of the stakeholders with the IPO was organised and in that meeting, it was assured that due consideration has been given to such submissions including of FICPI-India. In fact, on January 16, 2022, revised notification substantially addressing the concerns raised by us were issued. This reaffirms FICPI-India’s engagement with IPO for over 15 years on all critical matters.   

FICPI’s view and involvement 

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.

Next steps/further reading 

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