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22 Recommendations made to PMO for fixing up the Indian Patent and Trademark office

Policymaker’s dream of India becoming a $5 Trillion economy by FY25-26 cannot be achieved by just exporting Wheat and Rice, export of Technology has to fill in the majority gap.

Intellectual Property plays a role of catalyst in research, development and commercialization of cutting-edge technology; however, India is lagging behind in providing timely protection thereto. Sanjeev Sanyal (Member) and Akanksha Arora (Deputy Director) of the Economic Advisory Council to the Prime Minister have come up with numerous recommendations for the betterment of Intellectual Property ecosystem in India. Unlike most of the official announcements, I found the list of recommendations as very practical, realistic and candid. The authors have truly understood the need of the hour and in my humble opinion an action should be taken by PMO/DPIIT on these recommendations as soon as possible. These recommendations are:

  1. Manpower in Patent Offices to be scaled up from 860 to 2800 within the next 2 years.Office of CGPDTM is cash generating organization (with surplus of ₹825 cr/ $103 million in 2020-21), more manpower will generate more surplus
  2. Develop a Diploma/Certificate Course with an Academic/Technical Institution to expand pool of Trained workforce. This course could be done concurrent to Graduation. Hire candidates on Contract basis as Patent Examiners from this pool.
  3. Time taken for Patent first examination report is 4.8 months however the final disposal takes 58 months because of shortage of Controllers. Bring down time for disposal to international standards of less than 2 years.
  4. There are approx. 1.64 lakh cases pending at Controller (Patents) level as of March 2022 for which preliminary examination has already taken place. Thus, the bottle neck is at the senior staff level. Thus, not just new manpower to be recruited the promotion of examiners to assistant controller should be fast tracked.
  5. Revisit Modified Flexible Compensation Scheme (MFCS). Provide Career Path to Talent at Patent Office.
  6. There is an acute shortage of Biotech Controller/Examiners and average time taken for Grant of Patent is 9 years as opposed to 5 years for other domains
  7. India has world’s highest percentage of withdrawn Patent Applications (38% in 2020). This is primarily because of long pendency of cases. Bring down the time to grant.
  8. Time limit to file pre grant opposition be Fixed.
  9. Decision after opposition hearing by Controller should be dispensed within 1 month
  10. Requirement for submission of foreign filing details via Form 3 should be abolished
  11. Consider bringing Utility Model Law after recruiting additional manpower.
  12. Outsource Administrative processes of the CGPDTM to a third party, like the way it is done in Passport Matters
  13. Fill up the shortage of manpower at Trademark Registry, more so at Senior Levels
  14. Trademark Examiners on Contract to be reinstated (as of 1st July 2022 there are no examiners on contract at the registry).
  15. There are about 2.6 lakh applications pending for Show cause hearing and another 2.4 lakhs at the opposition stage, there is a need to immediately fill sanctioned posts (Senior Levels) to increase manpower from 168 to 289.
  16. Automate, service of Trademark opposition notices and the counterstatements
  17. If response to Trademark Examination Report is not filed in due time, automatically abandon the application.
  18. Trademark Registration Certificate to be immediately issued upon completion of the 4 months advertisement period or successful completion of opposition hearings
  19. Strictly adhere to Timelines as prescribed under the Trademark Rules 2017
  20. IT upgrades
  • Introduce Aadhar based signature in addition to DSC in e-filing Portal
  • Introduce a bot, a fee calculator and an application that can guide the documents required upon checking a few boxes
  • Introduce contextual search in InPASS (Patent Search Portal)
  • Use IT tools and semantic analysis to help precise classification and allotment of Patent files
  • Automate formal examination using rule-based algorithms
  • Display uploaded documents in file wrapper using groupings like Formal Documents and Technical Documents
  • Upgrade IT Infrastructure from .net & JSP to Node JS and HTML5 etc.
  • Provide Patent Examiners with a search tool for searching Non-Patent Literature

21. Standardize a format for writing FERs and Decisions and reports etc.

22. Have more license for Videoconference software and allow more people to join Videoconference based hearings.

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About the Author
Priyank Gupta is an Intellectual Property Attorney registered to practice in India. Priyank has 13 Years of Industry Experience. Priyank is a Lawyer and Engineer by Educational Background,

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