The Intellectual Property office has recently issued its Annual report for the years 2018-2019. Our post covers some interesting aspects of the report.

Firstly, the report counts its notable achievement during the course of year as below:

  1. Simplification of the Patent procedures,
  2. Proposal for amending the Patents Rules in respect of revised definition of Start-up,
  3. Extending the facility of Expedited Examination to eight more categories of applicants (in addition to the existing two),
  4. Waiving transmittal fee for ePCT filing and fee for preparation of certified copy of priority document,
  5. Revising the statement of working of patents, i.e. Form 27, and
  6. Provision for timely submission of English translation of priority documents as per PCT Regulations have been taken up and are under process.
  7. Started periodic publication of list of First Examination Reports (FER) issued by the Patent Office
  8. Online grant/registration certificates of patents and trademarks
  9. Hearing through Video-conferencing.
  10. The office has set up processes for prompt redressal of stakeholders’ grievances/complaints.
  11. Integration of WIPO Digital Access Services (DAS) and WIPO Centralized Access to Search and Examination (CASE) in its examination modules.

To elaborate on the last point, the Indian Patent office has started to access the information available in the WIPOCASE during examination of the national phase applications to reduce burden on applicants for filing such documents. WIPO DAS has facilitated the exchange of Indian Patent documents, search and examination reports with other offices and make the documents available electronically leading to better quality patents and better decision-making by patent authorities.

The report also mentions implementation of Patent Prosecution Highway (PPH) between India and Japan as one of the key development during the last year.

In terms of international treaties, the following treaties were approved by the Indian Government:

  • the proposals for India’s accession to the Nice Agreement concerning the International Classification of Goods and Services for the purposes of registration of marks
  • Vienna Agreement establishing an International Classification of the figurative elements of marks
  • Locarno Agreement establishing an International classification for industrial designs.

Accession to these Agreements will help the Indian Intellectual Property Office to harmonise classification systems for examination of trademark and design applications, in line with global classification systems.

Data Analysis

Overall, from the data give below it can be assessed that IP Filings have seen a growth in numbers. It is apparent that over a period of 5 years between 2014 and 2019, Patent filings have increased by 18%, Design filings by 34% and Trademark filings by over 53%.

The trend in TM filing show that class 5 (Pharmaceutical sector) continues to be the most popular class with 12.81% of the total registrations, followed by class 35 taking 9.93% of the total registrations share

It is interesting to see from the above that there has been an increase of over 10% in the examined applications in the years 2018-2019 over the same period in 2017-2018. Also, there has been an increase of over 5% as regards the number of marks which were registered during the same years.

Trends in Patent Applications during the last 5 years

As can be seen, examination of patent applications has increased by just over 41% in 2018-2019 as compared to previous year 2017-2018, whereas “Granted” and “Disposal” of patent applications increased by 17.15% and 6.69 %, respectively.

Trends in Design Applications during the last 5 years

In Designs, pendency of examination for new applications continued to be around one month. During 2018-19, a total of 12,585 design applications were filed showing 6.31 % increase over the last year i.e., 2017-2018. The number of design applications examined has increased by 6.8%, whereas disposal of design applications increased by 5.8% as compared to last year.

International Applications through Madrid

The number of international registrations notified by the WIPO and grant of protection of marks under such international registrations sent to the WIPO within last 4 years after completing all the procedures is as follows:

As can be seen from the above table, the number of applications designating India continue to rise year on year. By the end of year 2018-19, a total of 14,778 designations were received by the Indian IP office. However, taking past designations into account, a total of 18038 applications were granted protection. Though India does not appear among the top 10 countries of origin and designation under Madrid, India joining the Madrid protocol has helped in creating overall efficiency in terms of examination of applications and more streamlined registration procedure.

Further, the report states that till the end of year 2018-19, in respect of 30,044 cases provisional refusals consisting of objections for protection of respective marks in India were communicated to the WIPO and in respect of 1141 cases, third party oppositions to protection of the marks were received. 65 oppositions were finally disposed of.

Till the end of year 2018-19, the Grant of Protection in case of 34,963 international registrations were sent to the WIPO and marks under such international registrations were granted protection in India. Also, interestingly, out of such 34,963 cases, in 24497 cases protection of marks were granted without requiring the holder of international registration to approach the Indian IP office.

Trademark Oppositions and Cancellation/Rectification

In so far as the contentious matters are concerned, the Registry data would show 51,975 Notices of opposition and applications for Rectification of the Register were filed during the year 2018-19 and a total of 50,828 such cases were finally disposed of. The disposal rate is healthy though does not project real picture, as previous year data is not made available. The disposed of cases comprised cases that were pending from the previous years. Overall, as we see this scenario, the Registry is disposing of less number of contentious matters than those which are being filed every year and this has resulted in backlog of cases with many cases waiting for hearing.

Details of Opposition/Rectification Applications filed at various Offices from 1st April 2018 to 31st March 2019 and their disposal

For Patents, the report mentions;

  • Pre-grant Opposition: 426 pre-grant oppositions were received in the office and 399 pre-grant oppositions were disposed of during the year.
  • Post-grant Opposition: Total 28 post-grant oppositions were filed during the year. Five (5) post-grant oppositions were disposed of during the year and 193 cases remained pending for disposal by the end of reporting year.

Conclusion

To sum up, the trends indicate substantial investment made by the IP office in strengthening technical manpower to enhance efficiency, uniformity and consistency in processing of IP applications. Further, efforts are being made to provide balanced and transparent IPR framework, dissemination of IP-related information, creating IP awareness in the country and nurturing bilateral cooperation at the international level. Much work is still required to be done in improving disposal of contentious matters adhering to the strict timelines so that any opposition and cancellation actions are dealt with in a timely fashion.