Japan firm heralds expedited patent application rethink in India

It took a petition filed for Nitto Denko Corporation to expose backlogs and pendency at the Indian Patent Office – and force a revisit of expedited applications.

Nitto Denko’s petitions highlighted the extensive backlog and resultant delays in the Indian Patent Office. Beset by underfunding and understaffing the office took anywhere between 8 and 9 years to grant a patent. Compare that to the six months ‘ordinarily’ mandated to issue the First Examination report under the Patent Rules then.

The court after hearing the matter constituted a committee to look into the many recommendations made on behalf of Nitto Denko. Indeed, the door to expedited patents had been opened – and ultimately the Patent Office would receive much-needed reprieve, even if reform in the patent regime would be left wanting.

The committee deliberated out-of-turn patents and recommended adding Rule 24C to the Patent Rules for inventions contributing directly to public interest. That, and the applicant would have to prove resources to commence production within two years from filing.

Aside from inviting discussion on how backlog could be reduced, the petition also heralded change at the Indian Patent Office. The government disbursed an additional 30.96 million rupees ($492 thousand) to increase manpower and halt the attrition from the then-poor remuneration offered to its officers.

The proposed expedited patent is still some way short of accepting urgency – like for instance the US patent office which can be much more flexible in its dispensation. And how much industry, any industry, is able to benefit from strict public interest and capital requirements is one to be seen.

Authored by Pravin Anand.

The article was published in The Patent Lawyer April 2015.

Nitto Denko Corporation v Union of India and Ors

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