In the first part of this post, I had covered the Parliamentary Standing Committee’s Report recommendations on amendments to Section 3 of the Patents Act. Continuing the same thread of suggested reforms, in this post I will be analyzing the other changes recommended to the Act that focus on a few procedural provisions. The Report informs that these procedural changes are being suggested to bring in some flexibility in the Patents Act to ensure that the validity of patents is not determined by merely procedural constraints.
Flexibility in Procedure or Bending Over Backwards for Higher Patent Filing?
A significant portion of the suggested reforms to the Patents Act is dedicated to recommendations on loosening the procedural norms of patent filing and patent examination. The following is the highlights from the Report on the same:
- Section 122 (2) penalizes providing false information under Section 100(5) [Use of inventions by or with the authority of Central Government for government use] and Section 146 [Power of Controller to call for information from patentees] with a punishment of imprisonment up to six months and/or a fine. The Report recommends replacing the imprisonment term with a substantial monetary penalty for non-compliance.
- Section 11 (b) read with Rule 24B of Patents Rules, 2003 concerning patent application exam stipulates a 48-month period from the date of priority or filing of patent application within which a request for examination of the application needs to be made. The Report recommends the shortening of this time frame to reduce delays that occur in the process of examining and granting patents.
- Section 21(1) says that an application for the grant of a patent will be deemed abandoned if all the requirements imposed by the Act are not complied with, within prescribed time limits. The Report recommends that instead of completely abandoning patent applications for non-compliance with minor procedural/timeline requirements, penalties or fees should be imposed to induce some flexibility in the process.
- Section 104 concerning the jurisdiction of courts for patent infringement suits says that suits under Section 105 [Power of the court to make declaration as to non-infringement] and remedy under Section 106 [Power of the court to grant relief in cases of groundless threats of infringement proceedings] should not be instituted in a court inferior to a district court. The Report recommends the amendment of Section 104 to promote establishing alternative dispute resolution (ADR) mechanism and setting up zonal IPR mediation or arbitration centers at the district level.
- Finally, the Report also recommends the upgradation of the Indian Patent Office Website to make it user and accessibility friendly, to improve the patent filing and search facilities.
The recommendations on making procedural norms of patent filing less stringent are noteworthy. Minor procedural/timeline issues should not be the determining factor for the validity of a patent application. Easing such norms makes the process more accessible.
With respect to shortening the time period for patent application examination, it would be interesting to see what changes are undertaken to ensure compliance with newer and shortened timelines. As has generally been the case with legislations prescribing timelines for actions to be taken, the prescriptions do not necessarily translate into a speedier process. Further, as is with the case of most government offices, the patent office also faces several structural issues including being overburdened with their workload, having inadequate personnel capacity, and other issues which have been extensively covered on the blog here. The ongoing discussion in the comment section of this post also highlights some serious issues faced by patent examiners. The current recommendation also does not pay any heed to the quality of patent applications being passed by the Office. Once again, solely focusing on speed and numbers would mean the creation of a pseudo quota-fulfilling system and it would be easier to allow a bad patent than to spend time justifying/giving reasons as to why a patent must be denied. If a legislative change is brought in with a focus on speedier process instead of addressing the other structural issues that plague the process of patent examinations, then it is doubtful that it would lead to any fruitful change.
What is quite glaringly missing in the Report is its lack of focus on Research & Development (R&D) spending/capacity-building for improving the patent regime in the country. While the focus on improving the process of filing patent applications and making it accessible is important, it is hard to see how these changes would encourage innovation when only 0.65% of the GDP is being spent on R&D (also see posts here and here). The incentive provided by patent protection is only one part of an ecosystem that is required to foster innovation. It is also an aspect that figures mostly at the end of the innovation cycle and not at the beginning. In that, without R&D capacity, there would simply be a lack of an environment that helps explore gaps in technology and create subsequent socially beneficial inventions.
With respect to the recommendations on Section 104, while the idea of specialized IPR mediation or arbitration centers seems very attractive on paper, it is hard to see how or why these centers would not share the fate of the IPAB. Issues of executive interference, vacancies, and mismatched expertise of adjudicating members had long plagued the IPAB, a specialized IP forum. Further, even if ADR is promoted for dispute resolution, there is no guarantee that it would achieve the objective of ‘speedy justice’. Arbitration has been noted to be expensive and time-consuming and with mediation (unless court-mandated) not being binding on parties, it is hard to see why parties would not approach courts anyway to try their luck at obtaining results that favor them. If such specialized forums are being proposed, then it would have been prudent for the proposing body to first focus on lessons from the shortcomings of the IPAB and also to think through safeguards in the ADR process to ensure finality in their dispute resolution. So simply creating more institutional bodies to deal specifically with IP matters does not resolve any existing issues with respect to delays in IP dispute management as much as it just creates multiple forums that parties can approach.
Lastly, the recommendation on improving the Patent Office website is a much welcome suggestion. Should such an upgradation happen, apart from removing accessibility barriers, the site should also be designed to allow for patent filing and search facilities in Indian languages apart from English, thus broadening its reach.
In all, it is evident that the impetus to undertake these changes comes from the desire to increase patent filing in India. While the recommendations may be appreciated for trying to induce some flexibility into the Patents Act, it still takes a very heavy top-down approach. It focuses too heavily on statutory change rather than substantial policy reform to improve the overall patent regime. The Report fails to recognize that mere numbers do not create a robust ecosystem of innovation or a stronger IPR regime. The Report seems to associate correlation with causation in making these recommendations and it leaves many blanks when it comes to justifying why such amendments to the Act are necessary.