Under the leadership of the new Controller General of Patents, Designs and Trademarks (CGPDTM), the Indian Patent Office has witnessed significant changes, most of them being improvements. The most notable of such improvements include the tremendous increase in the speed of examination and disposal of patent applications, hiring of more personnel, provision of online submission of documents during prosecution of Design applications, and regular organization of conferences and help-desks to address the concerns of stakeholders.
Recently, on December 27th, the CGPDTM published three notices related to patent agents, hearings, and adjournments. In this article, we analyse these three notices in detail:
Notice 1 – Patent Agents Wrongly Representing Applicants
To appear before the Controller and represent an Applicant, a person must be a registered Indian Patent Agent, who has cleared the Indian Patent Agent Examination under Section 126 and has his name entered in the Register of Patent Agents under Section 125. In addition, in accordance with Section 132, advocates who are not registered Patent Agents are allowed to take part in any hearing before the Controller, as long as he is accompanied by the applicant.
In addition to the above, the registered Indian Patent Agent (or Advocate) must also be duly authorized by the applicant by way of a power of attorney (Form 26), to appear on behalf of, or represent the applicant in front of the Controller and communicate with the Controller.
However, according to this Notice, it has come to the notice of the Indian Patent Office that unqualified persons are taking part in proceedings before the Controller, such as hearings, and wrongly representing the Applicant or making communications with the Controller. These persons are either not patent agents within the meaning of the Indian Patents Act (hereinafter, “Act”) or not authorized by the Applicant or the party concerned. It has been observed that most of the time such persons are either employees of patent agents or law firms where the patent agents work.
Section 123 of the Act prescribes that if any person wrongly describes or holds himself out as a patent agent, he shall be punishable with a fine which may extend to 1 lakh INR (1,200 USD) in the case of the first offence and 5 lakh INR (6,030 USD) in case of subsequent offence. The Notice by the CGPDTM confirms that appropriate action will be initiated against such persons, under Section 123.
Notice 2 – Adjournments of Hearings
As per Rule 129A of the Indian Patents Rules, 2003 (as amended) [hereinafter, “Rules”], an applicant or a party to a proceeding may request an adjournment of the hearing with reasonable cause along with the prescribed fee, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms, as he may direct may adjourn the hearing and intimate the parties accordingly: Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.
According to the Notice, it has been observed that requests for adjournment are being filed without mentioning the reasonable cause. Therefore, the CGPDTM has issued this Notice to remind all stakeholders that it is necessary to mention the reasonable cause for which an adjournment is being sought, and where such reasonable cause is not mentioned, the request for adjournment will no longer be entertained. Furthermore, the Notice states that it is desirable that “reasonable cause” be supported by documentary evidence.
The term “reasonable cause” is a very broad term. Usually the adjournments of hearing are sought because Applicant is either unavailable or needs more time to prepare for the technical objections raised in the hearing notice. So, in most cases the Applicant would not have any documentary evidence, especially if they are seeking an adjournment for the reason that they need more time to prepare for the technical objections raised in the hearing notice. The requirement of documentary evidence for seeking an adjournment would place undue burden on the Applicant(s).
Notice 3 – Time between the Notice and the Hearing
Up until now, after issuing a Hearing Notice, the Controller generally gave up to 3-4 weeks between the date of issuance of the Hearing Notice and the actual Hearing. However, according to the Notice, the Office of the CGPDTM has decided, with immediate effect, to reduce this time to 10 days, i.e., Hearings will now be scheduled in 10 days from the date of issuance of the Hearing Notice. This practice is in accordance with Rule 129 of the Indian Patents Rules, which states, “before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to a proceeding adversely, the Controller shall give such applicant or party, a hearing, after giving him or them, ten days’ notice of such hearing ordinarily.”
This practice applies to post-response hearings as well as hearings in pre-grant oppositions under Rule 55 and post-grant opposition matters under Rule 62 of the Indian Patents Rules, 2003 (as amended).
In addition to the above, the contents of the Notice reiterate that no party shall be given more than two adjournments, in accordance with Rule 129A. However, in an unexpected and in the opinion of stakeholders, an unfair turn of events, the Notice states that each adjournment shall not be for more than 10 days.
Analysis and Conclusion
In all three Notices, the CGPDTM insists that these changes are being implemented in order to reduce the pendency and expedite disposal of patent applications, “for the mutual convenience and in true spirit so that the applicants enjoy the benefits of patent rights on time.”
While the intention and the spirit of these actions are indeed going to aid in reducing the backlog, changing the prejudice against the Indian Patent Office (IPO) being a sleeping elephant, and perhaps finally pleasing the USPTO enough to remove India from its Priority Watch List, the opposite is also true.
Stakeholders, including Applicants and their Indian Patent Agents, are surely going to have trouble adjusting to this new strict and deadline-focussed regime, as opposed to the lax attitude they have come to expect of the IPO. This implies that applicants are now going to have to become even more careful with sending timely instructions, and ensuring that they select the right firm to represent them – larger firms with more clients are clearly going to have their hands full, while smaller firms with limited experience and workforce might not be adept to handle these new developments.
Having said the above, the Indian Patent Office has, in the past, issued Public Notices and then later on withdrawn them either due to non-compliance with the Law or due to general disagreement among the stakeholders. Therefore, the CGPDTM might withdraw at least Notice 3, which is the most stringent out of the three.
At least for now though, applicants, especially foreign applicants must remember:
- To ensure that the person representing you is a registered Indian Patent Agent with the authority to appear before the Controller.
- No more than 2 adjournments to a hearing are allowed, and each of these requests for adjournments must mandatorily be accompanied by a reasonable cause.
- The time between the issuance of the hearing notice and the date of the hearing has now been reduced to 10 days or less. Therefore, ensure that you provide timely instructions to your representatives.
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