In This Issue

Newsletter on CG’s Notification and Reviews

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With the registration applications for various components of IP like Patents, Trademarks, Designs etc showing a marked increase, the office of the Controller General of Patents, Designs and Trademarks has from time to time initiated steps to ease the process of registrations and to deliver timely service. These efforts have won praise and appreciation from various quarters not only at the national level but at the International level too. More and more individuals and companies based abroad have started looking at India as a destination to fulfill their IPR aspirations. As a part of this endeavor, the office of the Controller General of Patents, Designs & Trademarks vide its notifications dated 26th December, 2022 has effected a few amendments to certain sections of the Patents Act and Rules for speedy disposal of long pending applications/matters, the gist of which are as under : -

  1. The practice of giving four weeks’ time from the date of hearing intimation/notice for disposal with or without pre grant oppositions as well as post grant opposition matters against the grant of patents will be done away with and replaced by a 10 day time period from the date of hearing intimation/notice to expedite the timely disposal of long pending application/matters.

  2. No party will be given more than two adjournments and each adjournment shall not be for more than 10 days instead of 30 days as prescribed in the Patent rules

  3. Only authorized Patent agents will be entitled to represent their clients in respective matters before the Controller of Patents. This is to prevent unauthorized persons including employees of patent agents or law firms where patent agents work, from taking part in the proceedings and communicating with the Controller. Non compliance will lead to strict action being taken against such unauthorized persons and the patent agent and the law firm employing such persons if found that such an act committed on the directions and instructions of the concerned patent agent or law firm. This in way prevents an Advocate not being a Patent agent from taking part in any hearing/proceedings provided such an advocate is duly authorized by the applicant or the party concerned by filing Form 26 and is accompanied with the applicant or the party concerned

  4. Henceforth requests for adjournments, without “Reasonable Cause” being mentioned and specified will not be entertained. It is desirable that such Reasonable Cause is supported by documentary evidence if any.

Subsequent to the above notifications, various Patent Attorneys and Law firms have come out with their views, suggestions and comments which in a nutshell are as under : -
  1. The Patent office should clarify/define the term “Reasonable Cause” because the applicant is paying fees for adjournments and so has the right to get clarity on the same.

  2. Cap of 10 days time for seeking adjournment is too less as taking in to account the clubbing of two weekends, at times would effectively result in an adjournment of not more than 5 to 6 days. Again considering the fact 605 of the applications are from foreign countries, a 10 day time period is too less for obtaining technical inputs and instructions from the foreign applicants. In the event of refusal of adjournment, would the official fee be refunded? Instead the onus should be on the Patent office to dispose of cases for which hearing is issued within 3 months from the date of issuance of the hearing notice.

  3. There has been inordinate delays in getting responses from the Patent office where FER responses have been filed by the applicants years back. This has to be looked into and remedial measures have to be taken at the earliest.

  4. Demanding documentary evidence for “reasonable cause” makes the process very complex/cumbersome though it is not required at all. This is akin to asking the Controller to provide documentary evidence for the suo-moto adjournment of the hearing by the Controller

  5. Last but not the least, the CG cannot issue such directions and notifications without discussing the issues with the Stakeholders which is violation of the due process of law.

  6. The Controller, particularly the new ones who is in charge of examination should also take the hearing during prosecution, unless under special circumstances instead of repeating the same objections of the FER.

The president of FICPI- India (Society of Intellectual Property Attorneys) is scheduled to meet the Controller General to take up the above issues agreed on consensus by the members. It is sincerely hoped matters will be amicably resolved to the utmost satisfaction of everyone concerned

  Contributed By : R.Sriram


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