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SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
November 28, 2016
MINUTES OF THE MEETING
IP India & FICPI Meeting
Mumbai, India
Thursday, November 24, 2016, at 11:00 am
The minutes of the meeting with IP India & FICPI held at the Boudhik Sampada Bhavan, Antop
Hill, S.M. Road, Mumbai-400037on Thursday, November 24, 2016.
Members present:
FICPI International Delegation
Mr. Douglas N. Deeth ................................................................... President
Ms Coleen Morrison ............................................................. President-CET
Mr. Robert Watson ........................................................ Vice-President-CET
FICPI India Delegation
Mr. Sharad Vadehra… ....... President, FICPI-India & Coordinator, CET 9
Mr. Swarup Kumar ................................................ Secretary, FICPI - India
Mr. Calab Gabriel ..................................................... Member, FICPI- India
Intellectual Property Office
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
Mr. A. T. Patre…………..Dy. Controller of Patents & Designs and Head of Office
Mr. N.K. Mohanty……. ………………….. Dy. Controller of Patents & Designs
Mr. Amarendra Samal ...... …………………Dy. Controller of Patents & Designs
Mr. N. Ramchander ………………………. Dy. Controller of Patents & Designs
Dr. Dinesh Patil …………………………...Asst. Controller of Patents & Designs
Mr. R. A. Tiwari ……………………………Dy. Registrar of Trademark and G.I.
Mr. S. K. Pandey ……………………………Dy. Registrar of Trademark and G.I.
Mr. S. D. Ojha ………………………. …....Asst. Registrar of Trademark and G.I.
Mr. Sachin Sharma……………………………..Asst Registrar of Trademarks & GI
Mr. S. M. Togrikar.…………………………….Senior Examiner of Trade Marks
AGENDA AND POINTS OF DISCUSSION
11:00 am–11:02 am: Introduction of foreign and Indian delegates of FICPI with CGPDTM – Mr. Swarup
Kumar
11:02 am–11:04 am: Introduction of FICP India, its activities and FICPI India firms – Mr. Sharad
Vadehra
11:04 am– 11:06 am: Introduction of FICPI and its activities – Mr. Douglas N. Deeth
11:06 am–11:08 am: Introduction of CET and its activities – Ms Coleen Morrison
11:08 am–12:00 noon: Discussions with the learned CGPDTM relating to:
1. Issues relating to Patent matters in India
i. Bringing in more transparency in the examination process and
interaction with stakeholders
- Delays in examination of the patent applications, issues
related thereto and how the same can be overcome
- Issues regarding the new format of the first examination
report including issuance of the complete examination report
with all the citations at the very first instance in view of
shortened time period to respond to the same and the
requirement to have the opportunities for discussion of the
case outside formal submissions.
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
- Delays in grant of patent post hearing and including the issue
for taking extension of time for filing post hearing written
submission
- Issues regarding having clear guidelines so that the
stakeholders as well as Patent Office can settle the avoidable
issues with clarity
2. Indian IP Office issues
i. Information Disclosure issues- Compliance of Section 8 of the
Indian Patents Act?
ii. Excess claims fees on NP entry – can subject matter deleted be
reintroduced?
iii. Issues with respect to contacting Examiner’s and Controllers by
stakeholders for IP related matters
iv. Examination and hearing proceeding of the application by an
Examiner of different jurisdictions
v. Scope of amendment and its interpretation under Indian Patents
Act
vi. NBA related issues during examination of the applications where
biological material is used
vii. Examination of application for Design and the need to have a
guidelines over the same
viii. Maintenance of the design Register online
3. Trade Marks
i. Avoidance of the ‘creep’ of plain packaging to other fields than
tobacco
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
ii. Accurate Madrid Registers
4. Trade related Issues
i. The TRIPS topic
- TRIPS COMPLIANCE-Harmonization of practice
12:00 noon – 12:15 pm: Any other miscellaneous points for discussions
12:15 pm : Close of Meeting
The Minutes of the meeting are presented hereinafter:
1. Mr. A. T. Patre, Dy. Controller of Patents introduced himself and the other members of the
CGPDTM team and indicated that the Controller General of Patents, Trademark and
Designs could not attend the meeting due to an urgent matter for which he had to visit New
Delhi. However, the CGPDTM was kind enough to make arrangements for the most senior
officials of the Mumbai, Patent Office to meet the FICPI delegates. Thereafter, Mr. Patre
briefly introduced the office of the CGPDTM. Mr. Patre indicated that India has Patent and
Trademark offices in New Delhi, Mumbai, Chennai and Mumbai. In addition to these cities,
the Trademark Registry also has an office in Ahmedabad. The Patent Information Centre
and Rajiv Gandhi National Institute of Intellectual Property Management of the Indian
Patent Office are located in Nagpur.
2. The Secretary of FICPI-India, Mr. Swarup Kumar then introduced the FICPI International
delegates to the Deputy Controller and the Head of Office, Mumbai and the officials
representing the IPO and informed them of the purpose and intent of visit of FICPI team.
3. The President of FICPI-India, Mr. Sharad Vadehra introduced the elected Executive
Committee of FICPI India and briefed the Dy. Controller about the activities and
involvements of the FICPI, India in the past one year or so. Mr. Sharad Vadehra also
highlighted in the meeting that FICPI has more than 5000 members from over 86 countries
and a substantial number of members are stakeholders having interest in the Indian IP
System. Mr. Vadehra also highlighted that FICPI India along with FICPI have had 4
meetings in the past with the office of the CGPDTM and several crucial issues have been
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
discussed including reduction of fee for sequence listing, allowing for deletion of claims at
the time entry of PCT application in India and Patent Agent Examination and FICPI is very
pleased to note that such issues were taken seriously by the Government of India and
positive steps were taken.
4. FICPI’s activities as well as broad details of membership worldwide were presented by the
President of FICPI-International, Mr. Douglas Deeth. FICPI’s growing interest in and
importance of the Asian Region with special emphasis on India, China and Middle East
was highlighted. He also explained the Federation’s thought process of regularly engaging
with the Patent Offices across the world including but not limited to EPO, USPTO, JPO,
SIPO etc. Mr. Deeth also informed that an agreement has been signed between EPO and
FICPI, whereby the former will provide financial support for three years for conducting
FICPI SEAD course in regions including South East Asia and South America.
5. Ms Coleen Morrison, President CET then gave a brief about the FICPI’s study and work
commission (CET), its role, various sub-groups within it and work done by CET. Ms
Morrison also emphasized on CET’s role in engaging with governmental and judicial
authorities in various jurisdictions through submission of comments on guidelines, physical
presence at meetings and filing of amicus briefs etc.
6. The Vice-President of CET, Mr. Robert Watson, then briefed the Deputy Controller about
relatively newly created CET 9, which focuses its activities on the Asian region. He also
explained the idea behind creation of the Asia specific group, its thought process and role it
intends to play going forward.
7. This was followed by a discussion on the specific points as per the agenda.
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
(1) Issues relating to Patent matters in India
i. Bringing in more transparency in the examination process and interaction with stakeholders
- Delays in examination of the patent applications, issues related thereto and how the
same can be overcome
Mr. Vadehra introduced the issues relating to substantial delay in examination of the patent
applications year after year. This, explained Mr. Kumar, has led to a considerable backlog over a
period of time. Mr. Patre, the Dy. Controller & the Head of Office (HO), explained that many steps
were being taken by the IPO to take care of the backlog, which now stood at nearly 200,000 patent
applications as opposed to a much larger number in the past. For instance, the hiring of 459 new
Examiners by the Indian Patent Office recently was considered to be very good step towards
decreasing work pressure for Examiners and increasing efficiency in the long run.
Also, by virtue of the amendments carried out to the Patent Rules in 2016, the time for placing an
application in order has been reduced by half, i.e. six months. This will in turn expedite the processing
of applications. Also, the Dy. Controller & the HO explained that steps towards auto allocation of
applications to the Examiners irrespective of their jurisdictions has been taken. This should address
the issue of overall backlog in all the jurisdictions. These steps along with changes in the functioning
of the IPO would take care of the back log in the near future.
- Issues regarding the new format of the first examination report including issuance of
the complete examination report with all the citations at the very first instance in view
of shortened time period to respond to the same and the requirement to have the
opportunities for discussion of the case outside formal submissions.
Mr. Vadehra explained this issue and pointed out that in the new format of the examination report, the
objections ought to be comprehensive enough so that additional objections are not raised in the
subsequent communications including in a hearing notice. He also indicated that possibilities should
be explored to resolve formal objections over telephonic discussions. The Dy. Controller & the HO
informed that the purpose of changing the format of the examination report was also to make the first
examination reports comprehensive with reasoned objections stated therein. Mr. Robert Watson
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
pointed out that over-reliance on hearings to settle cases were not a good trend since hearings ought to
granted only if they are absolutely necessary. Mr. Calab Gabriel, Member Executive Committee also
supported this view and stressed that more communication between Attorneys and IPO ought to be
encouraged.
Mr. Swarup Kumar then pointed out that in few cases, hearings are used to address petty formal
requirements, which can easily be resolved by discussions between the IPO officials and IP
Attorneys/Agents.
The Dy. Controller & the HO explained that the IPO is open to discussions and for those issues which
may easily be resolved by mere discussions, hearings are generally not appointed. If occasionally this
is occuring, more education of newer officials may help address the problem..
- Delays in grant of patent post hearing and including the issue for taking extension of
time for filing post hearing written submission
Mr. Vadehra highlighted the issue of delays in receiving decisions after a hearing. In several instances
decisions have been pending for years and no action had been taken in these files.
The Dy. Controller and the office of the CGPDTM stated that when there is a time line for almost
every aspect of patent procedure, delaying the grant of a patent after hearing has already taken place is
not acceptable. However it was felt these were more the exception than the rule in the opinon of the
Dy. Controller & the HO. He advised this aspect is being addressed more carefully now.
Mr. Kumar pointed out that in view of changes effected in the amended Rules, applicants have to
apply for postponement of hearings formally and pay official fees for doing so. In certain cases, even
after making specific requests to postpone the hearings by 30 days (after paying the official fees), the
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
applicants are afforded much less time (e.g. 15 days) compelling them to apply for a second
postponement. This aspect should be looked into by the senior officials.
Mr. Amerandra Samal, Dy. Controller and Dr. Dinesh Patil, Asst. Controller pointed out that
providing a time very near to 30 days was generally followed by the IPO officials. Nonetheless, the
Dy. Controller & the HO assured that he would look into this aspect.
- Issues regarding having clear guidelines so that the stakeholders as well as Patent
Office can settle the avoidable issues with clarity
This issue was brought up by Mr. Kumar, Mr. Gabriel and Mr. Vadehra who pointed out that clear
guidelines should be issued by the IPO so that the matters that are not so contentious may be settled
easily without following a long and tedious route. With respect to inventions in the field of Computer
Related Inventions and guidelines related thereto, Mr. Sharad Vadehra pointed out that Examiners at
different Patent Offices applied different approaches when examining this subject matter. While three
Indian offices have a positive approach, at least one of them has a very negative approach and
objections are raised on the very last date. The Controller also issued hearing letter for the same in
respect of several applications.
Mr. Patre pointed out that this has always been the thought process of the IPO officials and in many
cases they tend to settle issues forthrightly and amicably. However, it was highlighted by Mr. Kumar
and Mr. Vadehra that some officials prefer to take the long route – which is not ideal – and thus some
kind of internal guideline in this respect would be very helpful.
Also, Mr. Kumar and Mr. Gabriel pointed out that the Guidelines on Traditional Knowledge were not
thoroughly discussed with the stake-holders as was done in respect of other Guidelines. It was
stressed that these Guidelines should be modified in such a manner that patenting of
Traditional Knowledge having proper evidence is not prevented. There should not be any restriction
on Patenting of nascent/new patentable knowledge based on traditional knowledge. FICPI, India
offered to supply a position paper for such revision of TKDL guidelines.
(2) Indian IP Office issues
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
(i) Information Disclosure issues - Compliance of Section 8 of the Indian Patents Act?
Mr. Vadehra brought to the attention of the office of CGPDTM that under the new format of the first
examination report where objections under Section 8(2) requiring documents relating to the processing
of the corresponding foreign applications are not being raised in most cases in view of the shortened
deadline of six months to reply to the first examination report, there is a lack of clarity if the
requirement under Section 8(2) is being waived by the Office.
Thereafter, the attention of the Dy. Controller & the HO was directed by Mr. Watson to the FICPI’s
resolution in Cape Town, which resolved that given the facilities now open to Patent Offices for the
sharing of information on search and examination procedures, FICPI’s postion was that no
requirement should be applied to applicants to provide such information.
Mr. Kumar then directed the attention of the Dy. Controller & the HO to the requirements of Section 8
(2) given the broad wording of said requirement in the examination reports issued by the Indian Patent
Office. It was pointed out that compliance with the requirement of Section 8 (2) to provide, inter alia,
the search and examination report in respect of the same or substantially the same inventions filed in
major patent jurisdictions along with appropriate translations was too onerous and impractical in this
day and age.
The Dy. Controller & the HO advised that since the requirement is part of the legislation, compliance
will be necessary when required by the Controller in the examination report. However, Dy. Controller
pointed out that the IPO has already modified the form and format of the examination report, which
has further simplified the requirement under Section 8(2) to the extent that such requirement is not
even raised unless it is necessary to do so. Both the parties nonetheless expressed apprehension about
a third party being estopped from raising issue of non-compliance with Section 8 (2) in an opposition
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
or a revocation or a counterclaim proceeding. It was recognized that the Courts will inevitably decide
this issue in due course.
(ii) Excess claims fees on NP entry – can subject matter deleted be reintroduced?
This issue was taken up by Mr. Kumar and Mr. Vadehra. The IPO was of the view that claims once
deleted at the time of entering the national phase cannot be reintroduced at a later stage of prosecution.
Dr. Patil pointed out that this issue was discussed at the time of finalising the pharmaceutical
guidelines and IPO’s stand was that what was disclaimed cannot be reclaimed later. Mr. Gabriel,
however, pointed out that such stance is not always justified – since deletion need not necessarily
mean disclaiming. There could be instances where deleted claims ought to be introduced to secure
adequate protection. The Dy. Controller & the HO invited submission by FICPI on this issue
explaining our position but for the time being IPO would maintain the current view.
(iii) Issues with respect to contacting Examiner’s and Controllers by stakeholders for IP
related matters
This issue had already been covered in some detail while discussing the last issue of paragraph (1) and
thus no more detailed discussion on this issue was considered necessary. However, Mr. Gabriel
mentioned that the Centralized Examination should be discussed with the Shareholders especially the
Attorneys because of practical difficulties involved in Examination such as when a series of
applications are filed involving the same field of invention and these cases are distributed to four
different Patent Offices. This is inefficient for both the Patent Office and Attorneys as the cases will
have to be explained at four different Patent Offices.
The Dy. Controller & the HO informed that at present auto-allotment is the norm but these issues will
be looked into in due course.
(iv) Examination and hearing proceeding of the application by an Examiner of different
jurisdictions
This topic was led by Mr. Vadehra, Mr. Kumar and Mr. Gabriel. Mr. Gabriel explained that the date
of a hearing should ideally be fixed in consultation with the Attorneys because hearings are scheduled
after a lapse of one year or more after the filing of documents. Changes at both at the Patent Office as
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
well as on Attorney/Applicant side may well have occurred. Therefore, the hearing date will have to
scheduled with mutual consent of the Parties. If not, if the hearings are set on short notice and
applicants are not available/prepared owing to the lengthy lapse of time. As such they would have to
request an adjournment and pay unnecessary fees.
On this issue, the Dy. Controller, Mr. Patre pointed out that cases were being allotted through a
centralised allotment system and Examiners are being allotted cases irrespective of jurisdiction
depending on work pressure. Therefore, it was very well possible that an application filed in Delhi
will be examined by an Examiner based in Chennai or Kolkata or Mumbai. Regarding hearings, Mr.
Patre and Mr. Mohanty, Dy. Controller pointed out that a couple of steps have been taken to address
these issues:
(a) Controllers are open to travel to a specific jurisdiction to take hearings of there are
sufficient number of cases from that jurisdiction;
(b) Provisions for hearings via video conferencing is being worked upon and to that
respect, applicants’ attorneys may attend the IPO nearest to them and they will be
connected to the respective hearing officer (Controller) from different jurisdiction
electronically. In due course, the idea is that Attorneys may attend e-hearing right
from their offices via videoconferencing or such other means.
Mr. Kumar asked if there was provision for divisional cases or a group of related cases being handled
by same set of Examiners or Controllers. The Dy. Controller & the HO informed that at present such
provision did not exist but in due course IPO tends move towards such platform.
(v) Scope of amendment and its interpretation under Indian Patents Act
The specific issue raised on this point was whether claims may be amended in a manner that one
aspect of claims, which is not patentable, be replaced by another aspect which is patentable. For
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
instance, use claims (not allowable in India) in an application may be reworded/amended in a manner
that they are directed to composition or process for manufacture of a composition provided there was
support in the accompanying description. Officials relied on the strict wording of Section to justify
why this could not be done. However, the same section was relied upon by Mr. Gabriel, Mr. Vadehra
and Mr. Kumar to argue that amendments ought to be allowable as long as they were supported by the
accompanying description. In view of difference of opinion, it was thought this issue may be
addressed on a case to case basis. Also, FICPI reserved the right to submit a written position paper to
the IPO on this issue.
(vi) NBA related issues during examination of the applications where biological material
is used
Mr. Kumar and Mr. Vadehra explained this topic highlighting the plight of biotech applicants in India.
The coordination issues between the National Biodiversity Authority (NBA), IPO and Green Tribunal
(NGT) has created many hurdles for the biotech applicants that they are reluctant to pursue patent
protection in India. The situation was alarming in the sense that grant of a patent was dependent on
legislation yet concerned authorities have, incidentally or otherwise, created so many hurdles and set
so many requirements, especially when biological material has been obtained from India that securing
patent protection has become impossible for biotech inventions. Substantial time (quite often many
years) and energy is lost in an endeavour to secure clearance from the NBA. Mr. Gabriel pointed out
that this sorry state of affair must be taken care of lest filing of patent applications in biotech
inventions will continue to be detrimentally impacted.
The Dy. Controller & the HO appreciated the problems faced by the biotech applicants and assured
that the IPO is coordinating with the NBA on a regular basis. Also, he informed that the IPO is
represented before the NGT whenever meetings are commissioned. That being said, he suggested that
FICPI may wish to submit a detailed position paper and/or written submission highlighting the issues
and suggesting possible solutions.
(vii) Examination of application for Design and the need to have a guidelines over the
same
The Dy. Controller & the HO pointed out that there was no issue with examination of Designs
applications since they are disposed within six months. Also, it was pointed out that the Designs
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
Manual was quite comprehensive, thus there was no need for further guidelines. Nonetheless, in case,
there were some specific issues to be addressed, that may be brought to the attention of the IPO by the
FICPI.
(viii) Maintenance of the design Register online
Mr. Watson asked if there was a comprehensive online register of Design, to which the Dy. Controller
& the HO replied that at present there is no such comprehensive Register. However, steps towards
coming up with such comprehensive Register is being taken and soon we will have some development
on that front.
(3) Trade Marks
(i) Avoidance of the ‘creep’ of plain packaging to other fields than tobacco
Ms Coleen Morrison, President CET brought this topic up and explained that the issue of plain
packaging has been in the public eye for the past several years. After much consideration FICPI
passed a resolution in Zurich urging legislators to ensure any limitations on the manner of use of
a trademark were proportionate and reasonable. S h e a l s o i n f o r m ed t h a t F IC P I resolution
did not include a position on plain packaging of cigarettes specifically but rather encouraged
legislators to understand that trademark rights should not be legally limited, absent very good
justification for doing so.
Mr. R. A. Tiwari , Dy. Registrar of Trademark and G.I. cited certain provisions from the Trademarks
Act and affirmed that plain packaging are non-distinct and thus as such not capable of registering as
Trademark.
(ii) Accurate Madrid Registers
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
Ms Morrison informed that FICPI passed a resolution in Zurich t h a t urged both the International
Bureau ( IB) and contracting parties to maintain publically accessible Trademark Registers that are
current and accurate. On this, the Dy. Registrar explained that maintaining TM register was essentially
job of the IB and Indian TM Registry maintains internal Register for same.
(iii) Abandonment of hundreds of thousands of Trademark Applications by Indian
Trademark Office
Mr. Sharad Vadehra raised the issue of the notification of mass abandonment of trademark application
and highlighted the fact that this caused substantial problem to members of FICPI International and
stakeholders. Mr. Kumar added that these incidences imparted a very bad impression to foreign
applicants. Coleen Morrison explained that this was something that had been reported by FICPI
members as a concern when filing in India. She aslo noted that once Applicants arrived at such a view
it could be difficult to convince them otherwise.
Dy. Registrar of Trademark and G.I. Mr. R. A. Tiwari explained the circumstances under which mass
abandonment of trademark application was done.
(4) Trade related Issues
(i) The TRIPS topic - TRIPS COMPLIANCE-Harmonization of practice
On this issue, Mr. Watson explained that FICPI passed a resolution in Zurich, that urged all WTO
members to lift the suspension of the dispute resolution procedures (Subparagraphs 1(b) and 1(c)
of Article XXIII of GATT 1994) relating to practices which conflict with TRIPS and further
urged WTO members to make greater use of the mutual consultation procedure with the aim of
achieving a higher degree of compliance with TRIPS.
The Dy. Controller & HO and Dr. Patil in turn informed that Indian IP laws are TRIPS compliant
and on certain issues such s harmonisation of the examination practices/system, India has expressed
its non-agreeability. Having said that, the Dy. Controller & HO expressed that IP law and practices
are evolving very fast and it is in the best interest of the IP fraternity and IPO to keep each other
abreast of such developments.
SOCIETY OF INTELLECTUAL PROPERTY ATTORNEYS (FICPI INDIA)
SECRETARIAT:
OFFICE OF THE PRESIDENT: Remfry House at the Millennium Plaza, Sector 27, Gurgaon - 122 009 New Delhi National Capital Region, India Telephone #: +91-124-280-6100, +91-124-465-6100 Fascimile +91-124-280 6101, +91-124-257 2123 e-mail: [email protected]
KNK House, A-11 Shubham Enclave Paschim Vihar, New Delhi-110063, INDIA Telephone # +91-11 4377 6666 (100 Lines) Fascimile #: +91-11 4377 6677, 4377 66 76 e-mail: [email protected]
FICPI INDIA: SHARAD VADEHRA President, SWARUP KUMAR Secretary, NEHA CHUGH, Treasurer D. CALAB GABRIEL, JAYA BHATNAGAR , RANJAN NEGI, RICHA PANDEY, Council Members
FÉDÉRATION INTERNATIONALE DES CONSEILS PROPIÉTÉ INDUSTRIELLE FICPI HEADQUARTERS: Holbeinstraße 36, 4003 Basle, Switzerland
On this positive note, the issue based discussion came to an end.
ii. Mr. Deeth thanked the IPO officials for taking time out of their
busy schedule to meet FICPI representatives. Also, Mr. Deeth
expressed his pleasure on the openness and receptive nature of
the IPO officials towards suggestions made by the FICPI.
iii. The Dy. Controller & HO indicated that the IPO was always
open to receiving feed back and suggestions and thanked FICPI
for taking the time out to visit and share the views of its
members.
iv. Mr. Vadehra, Mr. Kumar and Mr. Gabriel from FICPI India as
well expressed their sincere gratitude to members of the IPO for
taking the time out from their busy schedule to meet the
delegation.
Swarup Kumar
Secretary
FICPI, India