Is India’s Expedited Examination Of Patents A Big Deal?

In recent days, the Indian news media has been awash with stories about a patent granted within a record 113 days. The norm, till very recently, was anywhere between three to five years and sometimes more. However, change is in the air.

In 2016, India’s federal Ministry of Commerce and Industry introduced a new provision under the amended Patent Rules, which seeks to fast-track the process of granting patents, and in 2017, more than a dozen companies including the Hyderabad-based Optimus Pharma Private Limited, were granted patents within a record time – between 113 and 300 days.

“Optimus got a process patent for Apixaban, an anti-coagulant, in record time. This reduction in time will help in cost efficiencies. The new rules are good news for start-ups and others. If it helps promote competition between Indian drug companies, then consumers will also benefit,” Optimus Managing Director Srinivas Reddy told Intellectual Property Watch.

These new procedures by the India Patent Office (IPO) can fast-track a patent application out of turn for a faster prosecution. “Under these procedures, the IPO will advance an application out of turn for examination if the applicant under Rule 24 (C) (1) files Form 18A along with a prescribed fee,” said Lex Orbis, an Indian legal portal.

India’s Narendra Modi government sees this as a major move and hopes it will spur innovation in the country and encourage fledgling start-ups by getting rid of procedural bottlenecks in the patent process.

Many patent lawyers in India have hailed the new provision under the amended Patents (Amendment) Rules, 2016 which seeks to expedite examination of patent applications.

“The Indian Patents Rules, 2003 has been amended by way of Patents (Amendment) Rules, 2016. The amendment came into effect on May 16, 2016. This is good news,” Vedant Pujari, Chief Consultant, Federation of Indian Micro and Small & Medium Enterprises (FISME) and Partner of Indian law firm, Accures Legal, told Intellectual Property Watch. “Overall, it is possible now to get a grant of a patent within a period of 1 year from the date of filing the application. That used to take about 3 – 5 years previously. In recent months, the Patent Office has also hired many patent examiners and is trying its best to dispose of the applications filed prior to the amendment as well in order to clear off the backlog.”

India’s Department of Industrial Policy and Promotion (DIPP) has also recently recruited 458 patent examiners, effecting a fourfold increase in the number of such staff, to expedite the process of clearing over 2 lakh (200,000) pending applications, a senior government official told Financial Express, an Indian business daily.

Foreign companies that want to expedite the patenting process can choose the Indian Patent Office as the International Search Authority (ISA) for their application filed under Patent Cooperation Treaty (international patent system) and then enter India.

Since October 2013, the Indian Patent Office is empowered as an International Search Authority and an International Preliminary Examining Authority.

How Big a Deal is This?

Intellectual Property Watch spoke to a range of people for their views on the subject.

“The evident streamlining of the patent review process in India is an exciting development that promises to make patents a far more accessible and useful tool for innovative Indian entrepreneurs and foreign investors alike,” Patrick Kilbride, executive director of international intellectual property for the Global Intellectual Property Center (GIPC) at the US Chamber of Commerce, told Intellectual Property Watch.

“This is yet another signal that the political perception of intellectual property rights in India is undergoing a sea change, from one that saw IPRs principally as a cost added to innovative and creative works after the fact, to one that recognizes IP as an essential infrastructure that enables investment in such works in the first instance, especially in the domestic context,” Kilbride added. “This development tends to confirm my view that we are on the verge of a new phase in the global economy, where India takes a leading position in technological innovation – assuming of course that this trend continues.”

However, even if the modified rules allow future applicants to put applications on the fast track if they select India as an ISA or an International Preliminary Examining Authority, and file applications in India first, US industry is unlikely to let go its demand for fundamental changes in India’s patent legislation, a longstanding thorny issue between India and the United States.

As Kilbride explained, “for this incentive to have its desired effect, India may find it timely to re-examine its approach to patentability criteria which in some cases unduly limits the scope of patent eligible subject matter compared to other international jurisdictions.”

Asked to cite an example, Kilbride referred to Section 3(d) of the Indian Patent Act 1970 (as amended in 2005) which is meant to deter ‘evergreening’ of patents.

Not everyone takes a sanguine view of the fast-tracking of patent examination in India. IPR experts focusing on public interest strike a cautionary note.

“I have yet to see any evidence that uses the correct measures and approach to show that expedited examination of patents leads to more innovation. Most studies, usually pro-IP, groups and governments that pay lip service to this approach make the classic error of saying increase in patenting equals more innovation,” Tahir Amin, co-founder and director of intellectual property at US-based I-MAK (Initiative for Medicines, Access and Knowledge), told Intellectual Property Watch.

Amin asserted that many studies which “count patents, don’t review the quality of those patents and if they are anything inventive. Some would argue that because there are more patents the that means there is more investment and R&D happening. Again, not a good methodology as more investment does not mean more innovation/inventions. So, in a nutshell, there is no solid and credible evidence out there as the methodology to make these assumptions is not done correctly,”

Amin also flagged the geo-economic context in which patent examination is being expedited in India. In a recent article, he pointed to the Regional Comprehensive Economic Partnership (RCEP) which India is currently negotiating with the region and where specific countries are seeking to establish obligations on member countries for expedited patent examination.

“Based on leaked texts, Japan and South Korea have been the main countries pushing for expedited (patent) examination,” said Amin. “Unfortunately, we have no further news of the status of negotiations.”

Image Credits: IP India