Indian IPR Regime and New Developments –Ease of Doing Business

and Bolstering Innovation

ByDr Pankaj Bhatnagar

General Managerbhatnagarp@indianoil.in

Indian Oil Corporation Ltd

IPR Ecosystem in India

Brief Discussion on Indian Patent Act and European Patent Convention

Recent Initiatives for Strengthening Indian IPR Regime

Organizations Facilitating IPR

IPR Considerations in Bilateral Business

Index

Intellectual Property Rights

PATENT

PLANT VARIETY

SEMICONDUCTOR IC LAYOUT

DESIGN

TRADE SECRET

DESIGN

TRADEMARK

GEOGRAPHICAL INDICATION

COPYRIGHT

International Agreements

India is a signatory to several International Treaties & Conventions related to IP rights

• Berne Convention• Marrakesh Treaty• Phonogram Convention• Paris Convention• Rome Convention • Budapest Treaty • Madrid Protocol• Patent Cooperation Treaty

(PCT)• WIPO Convention

IP Related

Agreements &

Treaties

IPR Ecosystem in India

Statutory Laws

Statutory Laws

Regulatory Bodies

Regulatory Bodies

Policy Initiatives

Policy Initiatives

Indian IP System

A robust, equitable and dynamic IPR regime forleveraging creative capabilities

Vibrant Intellectual Property (IP) Ecosystem– Promoting economic development & public welfare

– Providing protection to the IP rights

A well-established legislative, administrative and judicialframework to safeguard IP Rights

A TRIPS compliant IPR regime

IPR Ecosystem in India

Indian IPR RegimeLegislative Framework

• The Patent Act, 1970” • Amended in 2005 Patents

• “The Design Act, 2000”Designs

• “The Trade Marks Act, 1999”• Amended in 2010Trademarks

• “The Geographical Indications of Goods Registration & Protection Act 1999”Geographic Indications

• “The Copyrights Act 1957• Amended in 2012Copyrights

• The Biological Diversity Act 2002Bio-Diversity

• “The Semiconductor Integrated Circuits Layout Design Act, 2000”

Transistors & Electric Circuit Board

• Protection of Plant Varieties and Farmers' Rights Act 2001

Plant Varieties and Farmers

Indian IPR RegimeAdministrative Architecture

Controller General of Patents, Designs and Trade Marks (CGPDTM)– Deals with the issues relating Patents, Trade Marks, Designs and Geographical

Indications.

Registrar of Copyright– Deals with Original literary, dramatic, musical, and artistic works;

Cinematographic films; and Sound Recording etc.

Geographical Indication Registry (GIR)– Headquarters at Chennai, Deals with GI, to any agricultural, natural, or

manufactured goods, or to any goods of handicraft or industry, includingfoodstuffs

Semi-Conductor Integrated Circuits Layout Design Registry(SCILDR)

– Headquarters at Mumbai

Intellectual Property Appellate Board (IPAB)– IPAB has been set up at Chennai to hear appeals against the decisions of

Registrar of Trademarks, Geographical Indications and the Controller of Patents.

Copyright Board (CRB) merged with IPAB– CRB is a quasi-judicial body under Section 111 of Copyright Act 1957– To hear appeals against the orders of the Registrar of Copyright.

Biological Diversity Act

The Biological Diversity Act 2002 is inline with the United Nations Convention on Biological Diversity (CBD) 1992 – To conserve, use of biological

resources and associated knowledge occurring in India for commercial or research purposes

– Provides a framework for access to biological resources and sharing the benefits arising out of such access and use.

– Transfer of research results and application for intellectual property rights (IPRs) relating to Indian biological resources.

Biological resources

and associated knowledge

Commercial Use

ResearchBio-survey and Bio-utilization

Transfer of results and

Application for IPRs

National Biodiversity Authority (NBA)

Non citizens or non resident Indians

Institutions registered or incorporated out side

India

Indian Institutions with non-Indian participation

in share capital or management

Approval

Role of National Biodiversity Authority (NBA)

To regulate activities of, approve and advice the Government of India – Matters relating to the conservation of biodiversity, sustainable use of

its components and equitable sharing of benefits.

To grant approval under Sections 3, 4 and 6 of Biodiversity Act, 2002To notify areas of biodiversity importance as biodiversity heritage sites under the act To take measures to protect biodiversity of the country To oppose the grant of intellectual property rights to any country outside India for any biological resources obtained from India

Protection of IP Rights in IndiaImport & Export of Goods

India’s Customs Act prohibits importation orexportation of goods that, inter-alia, violate patents,trademarks, copyrights, designs and geographicalindications– the import of goods intended for sale or use in India, that

are in violation of specified provisions of the IP statutes

– The prohibition is subject to the conditions and procedures as specified in the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (IP Rules)

Comparison of Indian Patents Act &

European Patent Convention (EPC)

Governing Laws / Regulations

Parameter Europe India

Law European Patent Convention (EPC) (16th edition, 2016)

Patent Act, 1970(As amended 1999, 2002 & 2005 )

Rules /Regulations

EPC Implementing Regulations in force since 1 May 2016; amended in November 2016,

Patents Rules, 2003 as amended in 2005, 2006, 2012, 2014 & 2016

Patentable Subject Matter and Criteria of Patentability

Parameter Europe India

Patentable subject matter

Invention which is new, involves an inventive step; & industrially applicable, belonging to any field of technology.

New product or process involving an inventive step and capable of industrial application.

Criteria of patentability

Novelty; Inventive step; Industrial application

Newness; Inventive step; Industrial applicability

Patent Filing and Prosecution Procedure

Parameter Europe IndiaWhere/ how to file the patent application

(a) At the EPO in Munich, its branch at The Hague or its sub-office in Berlin, (b) with the central industrial property office or other competent authority of a contracting. Or through e-filing

At patent offices in Kolkata, Delhi, Chennai or Mumbai; or through e-filing

Provisional Specification Filing

Not Allowed Allowed

Stages in patent examination

Two stages viz. Formalities examination and Substantive examination

One stage

Parameter Europe India

Request for early publication

Possible Possible

Issue of search report & opinion on patentability

Yes No.Only Examination Report is issued

Expedited patent examination

Yes Yes.For eligible entities/individuals as per Patent Rules

Patent Filing and Prosecution Procedure

Parameter Europe India

Pre Grant

Proceeding Ex Parte observations by third parties

Inter-partes pre-grant opposition

Post Grant

Proceeding Inter partes post-grant opposition

Inter partes post-grant opposition

Patent Opposition

Government Initiatives for

Strengthening of Indian IPR Regime

Key Initiatives

Strengthening of IPR Eco System

• Augmentation of office space Infrastructure

• Recruitment of examiners, controllers etc• Mandate -speedy disposal of applications

Human Resource

• Further enhanced facility• Avoiding delay in transmission of fees for

PCT applications IB /ISA etc

Electronic Payment Gateway

• www.ipindia.nic.in has been updated• Informative, interactive and user-friendly• A Comprehensive and Dynamic Patent

Search Portal available for usersIPO Website

Strengthening of IPR Eco System

• Filing of patent applications and all related forms online has been made mandatory

• Online filing of other IPRs also facilitatedE-filing

• Protection of trademarks in multiple jurisdictions by filing one application with one set of fees.

• Facilitates ease of doing business in India

Trademarks Through Madrid

Protocol

• India is providing facilities as International Search Authority / International Preliminary Examining Authority (ISA/IPEA)

India as ISA / IPEA Authority

Patent (Amendment) Rules, 2016Salient Features

1. Reduction in time period for filing response to FERSix months from the date of FER extendable by 3 months

2. Remote Hearing, Restriction on adjournments andassociated factors

Video conferencing or audio-visual communication allowed

3. Claim deletion at National Phase Entry in India for a PCTapplicant

Help in reducing excess claim fee

4. No extension of 31 months for NP entry

5. Refund of Examination FeeRefund of up to 90% of examination fees allowed, if application iswithdraw before the issuance of the First Examination Report.

Patent (Amendment) Rules, 2016Salient Features

6. Expedited Examination is now permittedA PCT applicant nominating IPO as ISA / IPEA by paying a higher feeAn entity qualifying as “Start Up”Regular application can be converted to expedited examination by fulfilling certaincriteria

7. Foreign Filing License (FFL) Requests to be disposed of within 21days

8. New Entity: “Startup” Defined with associated benefits

The amended Rules-2016 endeavor to reduce the pendency time, ensuring quality services and provide

other benefits to the applicants

Commercial Courts Ordinance

Parliament enacted legislation for fast-tracking commercial disputesrelated to IPR i.e.

– Commercial Courts, Commercial Division and Commercial Appellate Division ofHigh Courts Act, 2015

IPR related matters have been recognized as ‘Commercial’ disputes

– Disputes over INR 10 million (approx USD 150,000) or higher can be adjudicatedunder this Act

– Applicable for all IPRs unregistered and registered trademarks, patents,copyrights, designs, GI, domain names and semiconductor integrated circuits

Salient features

– Strict Timelines for reducing delays – no adjournments permitted

– Introduction of case management hearing

– Procedure for disclosure, discover and inspection of documents defined

– Sharing of Summary Judgment

– Payment of actual cost to be imposed on the defaulting party

National IPR Policy

Recognizes the importance of Creativity and Innovation– For growth and development of knowledge economy

To promote a comprehensive ecosystem– Realizing full potential of IPR in India– Stimulating economic growth, socio-cultural development and

protecting public interest

To create awareness about importance of IPRs as a marketable financialasset and economic tool

Department of Industrial Policy and Promotion (DIPP) is the nodalagency– To coordinate, guide and oversee implementation and future

development of IPRs in India

“Creative India; Innovative India”

National IPR PolicyKey Objectives

1. IPR Awareness- Outreach and Promotion - To create publicawareness about the economic, social and cultural benefits of IPRsamong all sections of society

2. Generation of IPRs- To stimulate the generation of IPRs

3. Legal and Legislative Framework - To have strong and effective IPRlaws, which balance the interests of rights to owners with larger publicinterest

4. Administration and Management - To modernize and strengthenservice oriented IPR administration

5. Commercialization of IPRs- Get value for IPRs throughcommercialization

6. Enforcement and Adjudication - To strengthen the enforcement andadjudicatory mechanisms for combat in IPR infringements

7. Human Capital Development - To strengthen and expand humanresources, institutions and capacities for teaching, training, researchand skill building in IPRs

Supporting StartUp

Startup means an entity, incorporated or registered inIndia– Not prior to seven years, however for Biotechnology Startups not prior to

ten years,

– Annual turnover not exceeding INR 25 Crore in any preceding financialyear, and

– Working towards innovation, development or improvement of products orprocesses or services, or if it is a scalable business model with a highpotential of employment generation or wealth creation

Incentives available to “Startup” for IPR development andits commercialization– Reduced patent filing fees, upto 80% fee concession

– Assistance in filing of IP applications and prosecution by empanelledpatent and trademark agents

– Expedited examination of patent applications

– A dedicated portal for availing services under the Startup India initiative

Other Government Initiatives

To promote India as the most preferred global manufacturing destination

‘Make in India’ initiative will also enable access to new technologies in emerging areas

To transform the entire ecosystem of public services through the use of information technology

‘Digital India’ will ease access to information , faster information flow and drive innovation

To create convergence across sectors and States in terms of skill training activities

To adopt innovative ideas, concepts and practices on skill development and implement on a wider scale

Organizations Facilitating IPR

Organizations Supporting IPR(in India)

Cell for IPR Promotion and Management (CIPAM) – A professional body under the aegis of Department of Industrial Policy

and Promotion (DIPP)• Take actions on issues related to IPRs• Simplifying & streamlining IP processes by formulating and implementing a focused

strategy • Coordination with all stake holders and IPR awareness campaign • Training and sensitization porgrammes for enforcement agencies • Facilitate implementation of best practices for promotion and commercialization of IP

within the country

Intellectual Property Facilitation Centre – IPFC– IPFC is a joint project of NRDC (National Research and Development

Corporation) and MoMSME (Ministry of Micro Small and Medium Enterprise)

– To promote awareness and adoption of Intellectual Property Rights amongst entrepreneurs and MSMEs in India

– Making accessible to high-quality IP services and Resources.

Centre of Excellence in IPR– Centre of Excellences in IP set up at MeitY, New Delhi and C-

DAC Pune– Providing a value added IPR related services to academic

institutions, scientific societies of MeitY, SMEs, start-ups andindependent inventors.

IP Facilitation Centres of Industry Organizations – The Confederation of Indian Industry (CII)– Federation of Indian Chambers of Commerce & Industry

(FICCI)– Federation of Indian Micro & Small and Medium Enterprises

(FISME)– National Institute for Entrepreneurship & Small Business

Development (NIESBUD)

Organizations Supporting IPR(in India)

IPR Facilitation Centres - EU

Europe-India IP Facilitation Forum– An Service Arm of The European Business and TechnologyCentre (EBTC)– Facilitates technology commercialisation and themanagement of IPR issues related to India– Instrumental in helping innovators, especially Small and MediumEnterprises, to protect their valuable intellectual assets andinventions in India.– Europe-India IP Facilitation Forum helps European and Indianinnovators to leverage the patent services such as Freedom toOperate (FTO) searches, patent drafting, and patent prosecution,technology landscapes, etc

European IPR Helpdesk– The European IPR Helpdesk supports cross-border SME andresearch activities to manage, disseminate and valorisetechnologies and– Other Intellectual Property (IP) Rights and IP assets at an EU level.

IPR Considerations in Bilateral Business

Business Collaborations

Comprehensive Due Diligence of a potential partner

– Legal Due-diligence to analyze legal risks and liabilities

– Financial Due-diligence to analyze financial risks and liabilitiesalong with financial health of the company

– Technical Due-diligence to understand technical relevance, andfuture of technology developed/offered, market potential, competitorsetc.

– IPR Due-diligence to ascertain status of IP assets of the companyalong with associated risk and liabilities

Detailed study of local industrial policies and laws of thetarget country

Checking of Local product standards

FTO studies before commercial adventure to mitigateassociated IP related risks

Valuation of IP for products and technologies for therelevant market

– Licensing in and licensing out– Royalty rates / licensing fee– Future revenues etc.

Protecting IPR and Creating Technology Portfolio

– Filing and securing IPR in respective jurisdictions– Protecting all forms of IPs, as applicable

• Preferably Before entering into negotiations with a party or intendedcommercialization

Business Collaborations

Considerations During Commercial Agreements– Need to have clearly defined IP Clauses– Ownership of IP rights to be explicit– Development of IP / Joint IP i.e new IP based onbackground IP and ownership rights– Sharing of cost, in case of joint IP– IP assignments– Licenses related to IP, including background IP /joint IP, Grant back of developed IP rights forcommercialization– Rights to use data, its commercial use andpublication

Business Collaborations

Considerations During Commercial Agreements– Licenses fee / royalty payments (enforceable), itssharing and audit mechanism– Effect on IP ownership after termination ofagreement– Grant licenses instead of transferring rights to

avoid losing control of IP– Clearly defined arbitration clauses with a

neutral tribunal location– Dealing with suppliers and sub‐licensees

• Need to bound adequately to safe guard pilferage of IP

Business Collaborations

IPR Disputes and Arbitration

Key Benefits– Arbitration can avoid parallel litigations– Advantage of flexibility, confidentiality & finality in dealing with

commercial disputes– Comparatively faster resolution of disputes– Disputes arising from IP licensing and other commercial

transactions are arbitrable except• Validity, infringements etc. of IPR

– Foreign Arbitration Awards are enforceable in India– Arbitrations carried out and awarded in a member country of

New York Convention and the Geneva Convention areenforceable in India

However, contractual agreement should clearly define dispute resolution through arbitration

Legal Remedies for IP Rights in India

• Infringement actions prescribed under various IP laws

• Can be exercised through Courts / Commercial Courts

Statutory Protection

• Protection of trade secrets & confidential information via contracts and agreements

• Breach of confidentiality can be exercised through any Court

Common Law

• Clearly defined arbitration clause in IP related contracts

• Arbitration and Conciliation Act, 1996 as amended in 2015

Contractual Remedies

(Arbitration)

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