Improved IPO process, their impact and the way forward

 

A meeting with IP Stakeholders was held by the Office of the Controller General of Patents, Designs and Trademarks to discuss the steps taken by the IPO for improving processes within the IPO & the impact these steps have made.

The IPO said that it had taken the following steps to streamline the patent process:

1. Updating of the Application Numbering System – This step was taken to bring the Indian patent application numbering system at par with the international practice and to improve the electronic processing of applications.
2. Merging of Requests of Examination (RQ) across four branch offices, based on RQ Filing Date, and allocation of RQs to Examiners – In order to address the discrepancy existing among the four branch offices with respect to the time when RQs in the same group were taken up for examination, the same has now been removed and an examiner’s physical presence at a particular location has been made insignificant.
3. Implementing amended Patents Rules – Amended patent rules were introduced to include new provisions such as withdrawal of applications, expedited examination, etc.
4. Allowing withdrawal of applications and refund of fee – with the introduction of the withdrawal provisions, about 1771 applications for withdrawal have been received by the IPO.
5. Website updation – The IPO website has been redesigned to make it more interactive, informative and easy to navigate.
6. Hearing through Video-conferencing – The provision of Hearing through Video-conferencing is now allowed on request of the applicant. Till date, a total of 14 Hearings have been held through Video-conferencing in Delhi, Mumbai and Kolkata.
7. Clearing Pendency in Statutory Publication u/s 11(A) – Pendency of statutory publications has been cleared up to 31-8-2016. 25992 pending applications were published in special E-journals published on 19th, 26th, 31st August and 2nd September, 2016. 12254 of these applications have therefore been brought in the examination queue.
8. RQ Pending list updated – About 6000 RQs which were left-out due to discrepancies, have been brought into the examination channel.
9. Augmentation of Technical Manpower – 458 New Examiners have been recruited, out of which 396 have joined the IPO.
10. Patent Agent Examination – Patent Agent Examination was held on 27-11-2016 and a list of candidates eligible for viva-voce has been made public on the 9^th of December, 2016.

 

The IPO has also undertaken improvements based on suggestions received during Stakeholders’ meetings at Mumbai & Delhi.  Majority of the stakeholders’ concerns were with respect to making of a robust and comprehensive IT infrastructure in view of the Patents Amendment Rules, 2016, which makes e-filing compulsory for Agents. Comments have been compiled and divided among following categories:

• Comments/Suggestions requiring Immediate Action
• Comments/Suggestions requiring upgradation in short term
• Comments/Suggestions requiring development in long Term

 

The following points requiring immediate action were noted and implemented:

1. Corrective action in cases of non delivery of FERs through email
2. File type format for Drawings (Complete Specification)
3. Anomaly in display of non-cash document in e-filing portal
4. Clarification in format, font and margins in Sequence listings
5. Post dating issues in case of Saturday & Sunday or holidays. Availability of hearing notices over E-mail.
6. Display of FER Date in Application Status.
7. Display of E-mail address in FER and application status.
8. Display of appropriate jurisdiction header in FERs.
9. Fixing of anomaly in extension provision for FERs in e-filing portal.
10. Display of correlating reference number of acknowledgement slip in CBR.

 

The Office of CGPDTM started electronic generation of Examination Reports and its intimation through email from 1 April 2016, thereby discontinuing the paper mode of communication for examination reports. Some of the Patent Agents reported non receipt of emails, while a copy of the FERs have been generated and uploaded in the File Wrapper on the Website. The issue was examined in depth and reasons for the anomalies were found to include:

1. Discontinuation the email that was submitted in address of service of application at the time of filing by the Agent(s)/Applicant(s)
2. Few FERs issued prior to action on Form 13 due to data error.
3. Typographical error in email address
4. Delivery failure by email server/ rejection by recipient server.

 

Corrective actions have been taken by office of CGPDTM to tackle all of the above instances as follows:

1. Facility to check and add additional email addresses through the portal
2. Re-Issuance of FERs with appropriate applicable dates in case of delivery failure.
3. Reporting mechanism in the Portal in case of non receipt of FER.
4. Workflow improvement to screen applications for correctness of email IDs prior to allotment

 

Some of the comments related to improvement in the portal. Such comments have been perused at length and following points have been considered for inclusion in the portal as short term action plan:

• Real time extraction of the data from WIPO during application filing
• Issue of Application Filing Receipt simultaneously along with CBR
• Improvement in Form 30 input structure (Well defined heads with respect to the Provisions under Patents Rules)
• Implementation of Hearing Cause list for other Patent offices which is currently available only for Delhi Office
• Availability of Compiled version of Granted Specification/claims
• Archive of Hearing cause list logs
• Provision for Virtual Keyboard for special characters in Specification
• Stock and Flow (dynamic utility) to be streamlined and made functional
• Establishment of regular Help Desk for e-filing

 

The table below shows a comparative performance of the patent applications in India during the year 2015 and 2016.

In the year 2015

Month	Filed	Examined	Granted	Disposal
April	3687	1125	297	915
May	3706	1134	363	900
June	4068	1321	400	1090
July	4287	1714	668	1505
August	3837	1751	672	1439
September	4074	1923	619	1446
October	4257	1619	562	1445
November	3319	1435	505	1319
TOTAL	31235	12022	4086	9959

In the year 2016

Month	Filed	Examined	Granted	Disposal
April	3611	317	452	1043
May	3595	348	478	1290
June	3811	1267	566	1344
July	3547	1520	685	1468
August	3658	1848	747	1772
September	3785	2278	757	1739
October	3667	2059	666	1560
November	3741	2877	1001	2762
TOTAL	29415	12519	5352	13077

 

TRADEMARK

In order to streamline the processes of the Trademark Registry, the following steps have been taken by the IPO.

1. Number of Examiners Increased – By increasing the number of examiners, the pendency in Examination has been reduced from 14-15 months during the financial year 2015-16 to 3 months by the end of November 2016.
2. Process of Examination re-engineered – After re-engineering of the process of Examination and intensive training given to the examiners, acceptance for publication is increased to 32-33 % from 8-10 %, last year.
3. Processing in PARM is re-engineered and decentralized – The function of PARM has been decentralized and additional officers have been authorized to discharge the function. The average disposal has increased from 5-6 thousand/month to 10 thousand and the percentage of publication has also increased from 10-12 % to 30-35%.
4. Hearing Process streamlined – The process of hearing has been streamlined and only those cases are set down for hearing where objections raised during examination cannot be waived after consideration of reply. The cases in which hearing was already set down by December 2015, were reconsidered and 72,000 Marks have been accepted for publication out of the 1,78,000 that were considered.
5. Process of Registration automated – The process of Registration was automated in August 2016 which has resulted in speedier disposal. Up to November, 2016, 1,29,674 Trademarks have been registered against 65,045 registered in 2015-16. Out of these, 99,500 have been registered since August, 2016 through automated process.
6. Pendency in Renewal – The process of renewal of trademarks is being addressed. Pendency has been brought down from 185000 to less than 50000 by November 2016.

 

The TMR still has the following issues to resolve and is working towards them in the following way:

1. Pending Examination in Certain application beyond Normal Queue – The CGPDTM Office has identified some of the issues (like pending TM-16s) for such pendency and the same is predicted to be settled by end of the March, 2017.
2. Pendency in PARM & Show Cause hearings – During the year 2017-18, special emphasis would be given to clear the pendency in PARM & Show Cause.
3. Pendency In disposal of request on Post registration Matters – The Office has taken up this issue and TM 23/24 would be disposed of on priority besides other pending PR issues which will be resolved as well.

 
Authored by Anjali Santhosh
Image Source- here, the image is in the public domain.