Suggestions Regarding Improvements in Patent Law In India
?Hon. Minister of Commerce and Industry, Shri. Piyush Goyal Ji, announced in the speech delivered in National IP Conference 2022, that suggestions regarding amendments in the patent law can be made.
Although, there are many areas of law that can be improved upon, I think the following four can bring some positive change in the Indian Patent System. Sharing them in a public post to garner more opinions on them.
?1. Third Party Observations: India should have a third-party observation system like all major economies.
Many major patent offices including those of USA, EPO, WIPO, China, Australia, Canada, etc. have implemented their versions of a third-party observation system to help reduce pressure on their examining staff. Indian Patent System, however, does not have a third-party observation system in place. Implementation of a third party observation system can have many benefits, such as, supporting the examination staff, adding revenue to the patent office (if fees is charged for each observation, like in the US), resulting in patents that are stronger and more resistant to invalidation in post grant procedures and litigation. This system if implemented well will also reduce the pre and post grant opposition proceedings abuse and delays. This system will also ensure that market competition will dictate the strength of examination of patent applications in various industry sectors. i.e., patent applications filed in more competitive industry sectors will see more third-party observations by competitors and thus will face stronger examination as compared to industry sectors with low market competition.
?2. Service Inventions: There should be provisions in the law regarding safeguarding rights of employees in case of service inventions.
Many countries such as Japan (Article 35, Japan Patent Act (Act No. 121 of 13 April 1959, as amended up to 2006), France, Spain, Germany, China, Hong Kong (Section 57 of the PO), Mexico, Russia, Netherlands, United Kingdom (Sections 39 to 43 of the Patents Act 1977), United States, have provisions in their law, that define what Inventions belong to the employer and what inventions belong to the employee. Some even protect the rights of the employee making the invention, such as by ensuring a licensing fee for the employee (e.g., Japan) in case of inventions originating as a result of her service to the employer. Indian Patents Act does not have any such provisions and hence opens the doors for conflict between employers and employees and even abuse of dominant power by the employer in that relationship. A balanced law is needed to protect the rights of both employer and employee in case of service inventions.
?3. Continuation Applications (Similar to the US): The Divisional Application does not serve the inventor fairly; the law should be amended similar to the continuation application in the US.
In particular Section 16(1) of the Patents Act, 1970, should read
领英推荐
“ (1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the?claims?disclosure?of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”
I.e., replacing the words, claims by disclosure. The rationale for this change is that, in today’s world, where there is an ocean of information out there, an inventor cannot possibly predict what part of his invention disclosed in her application is worth claiming. In that, the inventor cannot predict what prior art will stop her claims in the future during examination.
Since the law restricts the inventors/applicants for making a divisional application only for matter that is claimed, matter that the Inventor disclosed as part of the specification gets unprotected. This is unfair to the inventor, because a patent application is a contract between the government and the inventor, where the inventor discloses her invention in return of a twenty-year monopoly. In this case, although, the inventor has done her part in making a full disclosure, she is denied protection because she did not predict what part of the invention is patentable.
?4. Utility Models: India needs a utility model system for minor inventions and workshop improvements like many other major economies.
Many countries, such as China, Germany, Japan, and Europe provide Utility Models for minor inventions and workshop improvements. These utility models can prove to be very useful for small inventors and small to medium industries in India.
Note: The aforesaid views are mine and not of my employer. I take full responsibility for my opinions and hope they are helpful.?