Indian IPR Regime– Ease of Doing Business

and

Bolstering Innovation

By Dr Pankaj Bhatnagar

General Manager bhatnagarp@indianoil.in

Indian Oil Corporation Ltd

(Business to Business Meet – EU-India Conference on Advanced Biofuels)

(11th March, 2019

IPR Ecosystem in India

Initiatives for Strengthening Indian IPR Regime

Biodiversity Act-2002

IPR Considerations in Bilateral Business

Legal Remedies for IP Rights in India

Index

IPR Ecosystem in India

PATENT

The Patent Act, 1970

TRADEMARK The Trade Marks Act, 1999

DESIGN The Design Act, 2000

COPYRIGHT

The Copyrights Act 1957

TRADE SECRET Governed by Common Law

PLANT VARIETY

Protection of Plant Varieties and Farmers'

Rights Act 2001

GEOGRAPHICAL INDICATION

Geographical Indications of Goods(Registration and

Protection) Act, 1999

SEMICONDUCTOR IC LAYOUT

DESIGN The Semiconductor

Integrated Circuits Layout Design Act, 2000

A Robust

TRIPS compliant

IPR Regime Signatory to various

International Treaties

Well established

legislative,

administrative and

judicial framework to

safeguard IP Rights

Key Indian Government Initiatives

Strengthening of IPR Eco System

• Augmentation of office space Infrastructure

• Recruitment of examiners, controllers etc

• Mandate -speedy disposal of applications Human

Resource

• Improved payment facilities • Avoiding delay in transmission of fees for

PCT applications IB /ISA etc

Electronic Payment Gateway

• website www.ipindia.nic.in • More Informative, interactive and user-

friendly • Provides a comprehensive and dynamic

Patent Search Portal

Updated IPO Website

Strengthening of IPR Eco System

• Online filing of patent applications and related forms is mandatory

• Online filing of other IPRs also facilitated

E-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 as International Search Authority / International Preliminary Examining Authority (ISA/IPEA)

India as

ISA / IPEA Authority

• India and Japan to start a bilateral PPH program on a pilot basis in 2019

India – Japan Patent

Prosecution Highway

Patent (Amendment) Rules, 2016 Salient Features

1. Reduction in time period for filing response to FER

Six months from the date of FER extendable by 3 months

2. Remote Hearing, Restriction on adjournments and associated factors Video conferencing or audio-visual communication allowed

3. Claim deletion at National Phase Entry in India for a PCT applicant Help in reducing excess claim fee

4. No extension of 31 months for NP entry

5. Refund of Examination Fee Refund of up to 90% of examination fees allowed, if application is withdraw before the

issuance of the First Examination Report.

6. Expedited Examination permitted A PCT applicant nominating IPO as ISA / IPEA by paying a higher fee

An entity qualifying as “Start Up”

Regular application can be converted to expedited examination by fulfilling certain criteria

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

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

Objective to reduce the pendency time & ensure

quality Services

Patent (Amendment) Rules, 2017 Salient Features

1. In order to support Start-up India Program the “Start-up

Entity” redefined “An Indian entity recognized as a startup by the competent authority

under the Startup India Initiative or a foreign entity that fulfils criteria for

turnover and period of incorporation/registration as per Startup India

Initiative”

2. The period of incorporation/registration for Start-up

Extended to 7 years (10 years in case of biotechnology startups) instead of 5 years under 2016 rules

Amended to bring parity in the treatment of entities

under different schemes of the Government under

the StartUp India initiative

Draft Patent (Amendment) Rules, 2018 Salient Features

Published on 5th Dec, 2018

The key highlights :

1. Electronic submission mandatory for International Applications

2. Expanding the eligibility criteria for filing expedited

examination requests Including those who opted for Patent Prosecution Highway (PPH)

“Form 28 is made mandatorily for expedited examination

3. Constitution of pre-grant Opposition Bench

4. Some other procedural changes also made

Finalized after consultation with the stakeholders

Commercial Courts Act

Parliament enacted legislation in 2015 for fast-tracking commercial

disputes related to IPR

– Commercial Courts, Commercial Division and Commercial Appellate Division of

High Courts Act, 2015

IPR related matters have been recognized as ‘Commercial’ disputes

– Disputes over INR 3 million (approx USD 4200) or higher can be adjudicated

under 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

Key Features Key Objectives

Recognizes the importance of Creativity

and Innovation

Increasing IPR Awareness- Outreach and

Promotion and Human Capital

Development

Promote a comprehensive ecosystem Generation and Commercialization of IPRs

Create awareness about importance of

IPRs as a marketable financial asset and

economic tool

Overhaul of Legislative, Legal,

Administration, Management and

Enforcement Framework of IPR Ecosystem

Mission Statement

“Creative India; Innovative India”

Department for Promotion of Industry and Internal Trade is the

nodal agency to coordinate, guide and oversee implementation

and future development of IPRs in India

Organizations Supporting IPR in India

Cell for IPR Promotion and Management (CIPAM)

– Simplifying & streamlining IP processes

– Coordination with all stake holders and IPR awareness campaign

– Training and sensitization programs for enforcement agencies

Intellectual Property Facilitation Centre – IPFC

– Promotion, awareness and adoption of IPR for entrepreneurs and MSMEs

– Facilitating high-quality IP services and Resources.

Centre of Excellence in IPR

– Centre of Excellences set up at MeitY, New Delhi and C-DAC Pune

– Providing value added services to academic institutions, scientific societies of

MeitY, SMEs, start-ups and independent 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)

Research in Bio Fuels Area

Provisions of Biological Diversity Act 2002

Permission from NBA should be

taken before accessing and use of

any Bioresource such as

microorganisms, feed stock etc.

from India under BD Act

The National Biodiversity Authority

(NBA) is actively implementing the

provisions of the Act.

Recently, in September 2018, a

100 day window was opened to

regularize the past instances of

bioresource access.

Biological resources

and associated knowledge

Commercial Use

Research Bio-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

BD Act 2002 is inline with the

United Nations Convention on

Biological Diversity (CBD) 1992

IPR Considerations Best Practices in Business Collaborations

Comprehensive Due Diligence of a potential partner

Detailed study of local industrial policies and laws of the

target country

Checking of local product standards

FTO studies before commercial adventure to minimize IP

infringment related risks

Valuation of IP for products and technologies for the relevant

market

Protecting IPR and Creating Technology Portfolio

Avoiding Anti-competitive provisions while entering into

licensing agreements, supply agreements, franchisee

agreements etc.

Need to have clearly defined IP Clauses

Explicit Ownership of IP rights

Development of IP / Joint IP i.e. new IP based on background IP and

its ownership rights

Licensing in or Licensing Out

Clearly defined licensed IP, background IP / joint IP, Grant back

provisions for the developed IP rights for its future commercialization

Licenses fee / royalty payments (enforceable), its sharing and audit

mechanism should be explicit

Effect on IP ownership/rights after termination of agreement

Need to have robust dispute resolution mechanism like

Arbitration

Selecting neutral venue for arbitrations

IPR Considerations Commercial Agreements

IPR Disputes and Arbitration Benefits

Arbitration can avoid parallel litigations

Comparatively faster resolution of disputes

Advantage of flexibility, confidentiality & finality in dealing with commercial disputes

All 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 are enforceable in India

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

• Arbitration and Conciliation Act, 1996 as amended in 2015

Contractual Remedies

(Arbitration)

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Thank You