Signing Off – O.P Gupta & His Thoughts while Bidding a Bye to Office of The CGPDTM

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Signing Off – O.P Gupta & His Thoughts while Bidding a Bye to Office of The CGPDTM

Lex Witness Bureau | January 2021

WHAT DO YOU FEEL ARE YOUR MOST SIGNIFICANT ACHIEVEMENTS DURING YOUR TENURE AS CONTROLLER GENERAL OF PATENTS?

Most significant achievements since taking charge as Controller General of Patents include:

Substantially reduced backlog in Patents and Trademarks applications
Reduced timelines for examination in Patents (12-20 months vis-à-vis 60- 72 months from filing of request) and Trademarks (less than 1 month vis-à-vis 13-15 months from filing application) and for Registration of Trademarks (within 6 months vis-à-vis 6 years of filing) as compared to Dec-2015
Complete automation in IP processing workflow along with process reengineering
Uniformization of examination of patent applications across the country in a single queue and by auto-allocation of applications for examination based on date of filing of request irrespective of place of filing.

WHAT COULD HAVE BEEN THE MOST CHALLENGING SITUATIONS YOU HAD COME ACROSS AS CONTROLLER GENERAL OF PATENTS?

To remove huge pendency in examination of Patents and Trademarks applications, one need support of all stakeholders. Increasing Manpower by fresh recruitment was a huge challenge in office while making stakeholders (specially attorneys) accept e-mail as the mode of communication in place of Post and adherence to statutory timelines for requisite action at their end, was another challenge.

WHAT IS YOUR WISH-LIST OF THINGS FOR INDIA’S JOURNEY AND STANDING IN THE FIELD OF IPR ASSETS GLOBALLY?

My wish-list includes:

To see India’s rank in GII and GIPC Index among top 10-25 countries.
To see the Annual filings in Patents, Trademarks and Design rising to the level of top 5 positions globally
Examination of patent applications within about 6 months in all technology fields from the date of filing of request of examination
Grant of patent within 12-18 months from the date of filing of request of examination • Disposal of all contested cases in trademarks (opposition and other matters) within about 4 months of the matter getting ready for hearing.
Commercialization of patents in India rising at par with top developed economies.

HOW DID THE OFFICE COPED WITH THE PANDEMIC?

Necessary timelines in patents have been extended as per Government guidelines and the Court orders.

Though because of Lockdown due to COVID-19 pandemic, the performance during March- May 2020 was affected, requisite steps were taken for reviving IPO functions for efficient online working, extending procedural timelines and implementing work from home system for officers and staff. It enabled office to conduct online examination, hearings, grant and essential administrative functions without any disruption. In fact the filing and processing / disposal of IP applications in current year (April – Sept 2020) has been higher than the same period last year.

Since online hearings had started before the Pandemic, was the complete shift to online engagement with applicants stressful? Shifting to online engagement with applicants was not much stressful, but it required a lot of upgradation in ICT infrastructure and re-engineering of online systems. Also, consistent effort was required to bring around all the applicants, particularly domestic applicants, as also the officers to join online mode, who otherwise prefer to go in for physical mode.

WHAT ARE YOUR VIEWS ON THE COPYRIGHT ACT IN ITS CURRENT SHAPE AND FORM? DO YOU THINK IT IS TIME TO LOOK AT CERTAIN AMENDMENTS?

Copyrights is a very fast evolving field and the content creations / innovations there change very quickly with evolution of new technologies. The online streaming and OTT platforms are one such example. The law needs to be dynamic to take care of such situations and need to ensure that creative content generators get their due while the users also shall not be financially burdened unduly for accessing such contents.

WHAT IS THE PATENT OFFICE’S PLANS TO INCREASE/ENCOURAGE MORE PATENT AND TRADEMARK FILINGS?

Though filing in patents and trade marks is consistently increasing, such increase is far from expectation. Increase in R&D activity and Awareness Creation is required to be implemented effectively by all the concerned stakeholders including Industry and Govt. Departments/ Authorities. Patent and TMR offices, while doing the statutory work of examination and grant/ registration, have been actively organizing / supporting IP awareness activities in association with CIPAM and other industry organizations (CII, ASSOCHAM, FICCI etc.), Universities and academic institutions, SMEs etc. The focus is to implement the Objectives of national IPR policy that will stimulate generation, protection and commercialization of IPRs in India.

A positive image has been created in the minds of potential applicants by automated functioning in IPO resulting in expeditious office actions, tremendously improved performance of IP offices and reduced time-lines, viz., examination in patents within 12-20 months and within 1 month in trademarks, designs and copyright. This has assured early grant/registration of IPR to the stakeholders, which is going to be the motivating factor for them for filing of more IP applications in India. This is also reflected in consistent increase in filing of patent and TMR applications over last few years.

WHETHER THERE IS A NEED FOR LEGISLATION COVERING TRADE SECRETS, ESPECIALLY REGARDING THE BUZZ AROUND DATA PROTECTION?

Trade secrets are covered under common law and this being a TRIPS plus, there is no immediate need for a separate legislation for this. Regarding data protection and ownership, the Govt. is already in process of formulating new legislation that is in public domain.

IS IT POSSIBLE TO CREATE A UNIQUE MECHANISM FOR FASTTRACKING PATENT GRANTS FOR START-UP DEVELOPED TECHNOLOGY INVENTIONS?

A system for Expedited examination of start-up patent applications and reduced time lines for office actions has already been prescribed by patent office from stage of request for examination till grant of patent as per Rule 24 (C) by Patents Rules in May 2016. A separate queue of startup applications is maintained in the Patent Office for ensuring expeditious examination, post-examination processing and grant/ disposal.

WHAT IS YOUR MESSAGE TO THE INDUSTRY PROFESSIONALS FOR THEIR ROLE AND CONTRIBUTION IN SHAPING UP INDIA’S IPR PORTFOLIO?

Industry and professionals must come forward to support innovation and creativity and increase efforts in R & D, adopt IP system more effectively and ensure timely IP filing of their innovations. This will help the industry to remain competitive globally as well as in the domestic market. Further, in the changing industrial environment in the country, it is of utmost importance to increase India’s IP portfolio to make the country a manufacturing hub and stop outflow of capital by way of royalty for use of IP/ technology of others.

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Lex Witness Bureau

The LW Bureau is a seasoned mix of legal correspondents, authors and analysts who bring together a very well researched set of articles for your mighty readership. These articles are not necessarily the views of the Bureau itself but prove to be thought provoking and lead to discussions amongst all of us. Have an interesting read through.