The government, which opened a ‘tatkal’ window to expedite examination of patent applications in the backdrop of 2.37 lakh pending patent applications, has now set a limit on applications that it will consider under the fast-track clearance mechanism.
In a notice on June 14, the Controller General of Patents, Designs and Trade Marks said in terms of the provisions relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before December 31, 2016 has been limited to 1,000 requests. The notice did not specify any reasons for imposing the cap on the number of applications. The ‘tatkal’ window was opened after the amendments to the patent rules came into effect from May 16.
Expedited examinationUnder the ‘tatkal’-like system, applicants can opt for the ‘expedited examination’- route on the grounds that they have chosen India as the competent International Searching Authority or International Preliminary Examining Authority in the corresponding international application, and file their applications first in India. The ‘expedited examination’-route is also available to all entities that qualify as a start-up as per the definition for start-up provided in the Patent Rules. The applications for this route have to be filed only electronically.
Manoj Pillai, managing partner at LexOrbis (an intellectual property law firm), said, “In my view, instead of a tactical approach that imposes a cap on the number of applications, it is important that the authorities choose a strategic approach -- that of putting in place a robust system that focuses more on quality with an in-depth examination of applications. This will require appointing a greater number of patent examiners with technical skills and expertise in legal and patent procedures.”
Popularising IndiaThere is a need to have more patent examiners with technical skills because the top ten filers of patent applications belong to the hi-tech category, namely telecom, semi-conductors and consumer electronics, Pillai added. The 'tatkal' window was aimed at popularising India as a patent filing hub to ensure more companies file applications in India.
Currently, several applications for the initial examination are filed abroad, in places like Europe, the US or Japan.
Under the ‘expedited examination’ route, the fees for individuals and start-ups have been fixed at Rs.8,000, while for small firms it is Rs.25,000 and for large companies, the fee is Rs.60,000. During normal course where applications can either be filed electronically or physically, the fees ranges from Rs 1,600 (for start-ups and individuals) to Rs 8,000-8,800 (for large firms).
The Centre is aiming to bring down the time period for clearing applications from the present 5-7 years to two-and-a-half years.
