Ipr

Intellectual Property Rights

Paper on

Intellectual Property Rights : Ensuring protection in India

By Ms. Anuradha Goswami Confederation of Indian Industry Plot No 249 F Sector 18 Udyog Vihar, Phase IV, Gurgaon (Haryana) Phone: 91-0124-4014060-67 Fax: 91-0124-4014080 Email: [email protected]

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Intellectual Property Rights

IPR

in India

Background Since independence till 1990s, the Indian industry faced limited competition from within and outside the country. There were little incentives or pressures to innovate. Similarly, national research laboratories and academia had freedom to select their own research areas, which often turned out to be open-ended. Added to this, the protected market, centralized Government supported science and technology systems and administrative controls inhibiting changes made the development process slower. In the post-GATT environment, there is a new ball game – industries need to successfully compete in the global market and consolidate on economic security. The message that without world class technologies, the profit margins of industries would shrink, if not disappear, has been well received by Indian industry & Government as well and suitable corrective measures are being taken by them to face global challenges. Now Indian organisations have slowly started realising the fact that R&D and protection of Intellectual property is indispensable for survival. There has been a step up in the R&D spending by Public and private enterprises and the aggregate expenditure of top 50 companies has grown by an annual compound rate of 11.2%. The national investment on R&D activities attained a level of Rs 17660.21 crores in 2000-01. India indeed has some inherent advantages in the area of science and technology. ♣ ♣ ♣ ♣ ♣ ♣ ♣

Powerful engineering, S&T & multidisciplinary professional talent base World-class institutions Cost-effective manpower & research facilities/infrastructure Increased Industry-Institute partnerships Government’s investment in R&D and technological leadership High tech industries becoming IP savvy Good legal and administration infrastructure in the cities, and a democratic, liberal and stable polity & a great business ambience. ♣ Growing awareness of IP protection & its valorisation all across ♣ Imaginative legislative measures – balancing national interest & international obligations ♣ Emergence as a Global research design & development platform

Emerging National Scenario • Compulsions of Global Trade The multilateral trading system and WTO regime is rapidly changing the way business is being conducted. Geographical barriers to trade are fast disappearing. Reduction in import barriers, increase in entry barriers to export 2

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markets coupled with stringent quality and technology demands are posing enormous challenges & threats to India and India is bringing in adequate reforms and measures to excel in the world market.

• Intellectual Property Rights (IPR) Challenges The ownership of Intellectual property is a crucial issue that impacts market position and profitability of industries. India is realising this fact and this is evident from India’s position of no. 3 in PCT filings and its highest growth rate of 50 % in the segment of developing countries. The changes in the IPR regime have necessitated technological self-reliance, as borrowing of technology from developed will no longer be economically viable.

• Innovation – key requirement for competitiveness Though Indian industries and R&D institutes have not really excelled in the area of innovation due to various factors coupled with the past regime that did not encourage innovation, the broad technology base and infrastructure for industrial growth coupled with natural resources, low R&D costs and a vast pool of scientists/experts give India a unique advantage of generating world class technologies and IP. A nation-wide drive on Innovation is taking place with the vision of President of India & Indian companies are also embarking Innovation top priority.

• Industry-Institute Linkage A significant amount of Industry-Institute partnership is happening in the country in varied sectors and areas. Partnerships between technology generators/developers, market/business developers and financiers and government policy makers are emerging in order to translate knowledge into profitable commercial ventures.

• Investing in R&D Giant corporations from all over the world have set up research and development (R&D) centres in different parts of India. In the last three years, a total of 77 global firms have established their R&D centres in India as direct subsidiaries, according to a study done by the Administrative Staff College of India (ASCI) including GE, Delphi, Eli Lilly, Hewlett-Packard, Heinz, Honeywell, DaimlerChrysler and even McDonald’s. For some, such as the US$12.6 billion Akzo Nobel's car-refinishes business, the center came even before the company began selling its products in India. Together with the laboratories set up before 1997, the total number of R&D facilities owned by MNCs in India today is nudging the 100 mark. India provides a weighted tax reduction of 150% for R&D establishments which makes it a very congenial environment for R&D. Budget 2003-04 encourages research by extending tax holiday to R&D companies established upto March 31, 2004. Also public spending in R&D has gone up to 30.6% last year. 3

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Intellectual Property Rights With all these advantages and the developments taking place, India has also come a long way in modernising its IP laws. The GoI is proposing amendments to patents law in the context of international obligations as we have to meet them by 1.1.2005 which essentially means that we have to introduce a product patent regime for all technologies including those relating to foods, drugs, pharmaceuticals and chemicals. It raises a lot of concerns especially for the pharmaceutical industry and India realises the fact that absence of product patenting will adversely impact foreign investment in this sector as also India’s emergence as a technology and R&D driven economy. India is modernising its Patent laws not just with the objective to meet our international obligation of meeting the product patent regime by 1.1.2005. It is also an opportunity for us to look at the patent regime in a manner which can reduce the procedural complications, the time which is taken for the grant of patents, the need for awareness creation, awareness promotion and all other aspects which can support entrepreneurs, inventors, creators in not only protecting what they create but also in making appropriate wealth out of what they create. Dr. R A Mashelkar, Director General-CSIR, gave a ten-point National Agenda to move India on the path of economic progress and the role that Science and Technology and Innovation and Intellectual Property Rights are going to play and the sixth point says .. “ Launch an aggressive Intellectual Policy, in the Government, in the institutions and in the Industry. Erase the impression of India as a country that is ducking and avoiding, to one where it is willing to aggressively face the global competition by leading with a positive Intellectual property policy. Launch a patent literacy mission. Invest heavily in both physical and intellectual infrastructure, which will meet the new challenges of generation of world-class Intellectual Property, its capture, documentation, protection, evaluation and exploitation.” Dr. R A Mashelkar 21st February, 1999 Dr. R A Mashelkar Leadership Award Lecture

And India is moving ahead with this mission & objective towards creating a strong IPR regime in the country for economic & social growth & development.

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The Intellectual Curve

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INDIA

EU

USA

Is India ready ? Is India prepared with a strong IP regime. Will India be able to meet the international obligations under TRIPS before 1st January 2005. The answer is Yes because ♣ There is a steep increase in PCT patent filings from India. Country Korea China India South Africa Singapore Brazil Mexico

PCT Rankings of developing Countries PCT Filings % Growth 2552 1124 480 407 322 204 128

10.1 -32.7 51.9 -2.6 18.8 5.7 19.6

Worldwide Ranking 8 15 22 23 24 27 29

If you look at the PCT rankings of patents filed in the segment of developing countries you can see that Korea ranks 1, China ranks 2, India ranks 3 and so on. One of the interesting fact about PCT filing is that we have the highest growth rate, no doubt on a lower base but India is growing at 50% per annum whilst Korea is growing at only 10% per annum. China shows a de-growth at 30% per annum. There is a capability level that has been demonstrated in India

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which shows that we are quickly climbing that innovation curve. We need to take advantage of what is happening today. India is focussing on intellectual property and if we go on like this our world rankings will quickly rise. Today we are No. 22 in the world, Korea is No. 8, there is no reason why India cannot be in the top 5 patent filers in the world. PCT Applications filed from Developing Countries

2550 Korea

2050

China

1550

INDIA

1050

Brazil

Singapore Mexico

550 50 2000

2001

2002

Year

♣ Increased ParaIV filings : There is a strong emergence of new chemicals entities being developed by companies. We are seeing increased ParaIV filings e.g., filings by Ranbaxy & Dr. Reddy’s Labs.

♣ Indian Patent Act recognises the genetically modified organisms (GMOs) as patentable and IMTECH as a microbial repository.

♣ Increased number of patent law firms

♣ Increased number of patent attorneys qualifying each year ♣ Increased corporate focus on intellectual property ♣ Increased budgets for patent filing in every company and within the research laboratories and within the country as a whole.

♣ Great amount of awareness building in the patent aspect. However, when it comes to a state of preparedness, the answer is no.

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♣ Comprehensive modernisation of IP administration

The IPR regime in India –status & developments International Agreements – signed by India 1. Trade Related Aspects of Intellectual Property Rights: (TRIPS) India is a signatory of TRIPs in the Uruguay Round agreement of 1995. It is now bound to amend her existing laws in order to make it to make it TRIPs-compliant. The government has initiated action to bring in the requisite changes. In the last few years, India has enacted fully TRIPs-compliant Trademarks Act, Copyright Act, Designs Registration Act, Geographical Indications Act and Protection of Layouts for Integrated Circuits Act. A novel Plant Varieties Protection and Farmers Rights Act 2001 and the Bio-diversity Act 2002 are also in Place. Out of seven IPRs, there is a dispute only on providing product patent in food, drugs & chemicals. Indian patent law offers protection only to processes and not product patent for in respect of these. The Indian Patent Act of 1970 now in the process of third and final tranche that the outstanding issues are being addressed. Indian patent law has to be amended suitably to provide for product patents for duration of protection for 20 years in place of 5 to 7 years for processed foods, drugs and chemicals and 14 years for other sectors.

2. Patent Co-operation Treaty (PCT) On 7th September 1998, India deposited its instrument of accession to the PCT and is bound by Patent Co-operation treaty as 98th contracting State of PCT from 7th December 1998. Furthermore, nationals and residents of India are entitled to file International applications for patents under PCT at Patent office, Kolkatta as receiving office. With effect from 19th November 1999 Patent office branches at Mumbai, Chennai & New Delhi are also receiving the PCT applications allowing the applicants to file application at their regional Patent office. As on date of India’s accession to PCT, there were nine International Search Authorities (ISA’s) & Eight International Patent Examination Authorities (IPEA’s). Govt. of India opted for all of them as competent ISA’s & IPE’s, providing maximum options to its applicants. As on today India is the only State having maximum options. Four out of Top ten PCT applicants for the year 2002 are from India.

3. Paris Convention The Paris Convention came into being in 1883 for protection of Industrial Property. India became a member of Paris convention in December 1998. The Convention applies to industrial property in the widest sense including patent 7

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marks, industrial design, trade names, utility models, geographical indications and repression of unfair competition.

4. Berne Convention The Berne Convention is for protection of Literary and Artistic Works which came into existence in 1886 and is administered by WIPO. India is a signatory to the Berne Convention.

5. Universal Copyright Convention (UCC) The Universal Copyright Convention (UCC) was adopted in 1952 and is administered by UNESCO. 92 countries, including India belong to this convention.

Protection of various IPRs in India 1.

Patents

Patents are the strongest of all aspects of IPRs. The Indian Government has taken extensive measures and initiatives to modernise the Indian Patent Laws and make it TRIPS compliant. In respect of patent law, the TRIPs Agreement provides a three-stage time frame for developing countries to comply with the obligations. These envisage:(i)

(ii)

(iii)

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Introduction of a facility (“mail box”) from January 01, 1995 to receive and hold product patent applications in the fields of pharmaceuticals and agricultural chemicals till January 01, 2005. Further, on fulfilment of certain conditions, to grant exclusive marketing rights (EMRs) for a period of five years or till the product patent is granted or patent application is rejected, whichever is earlier; Compliance, from January 01, 2000, with other obligations of the TRIPs Agreement, namely, those related to rights of patentee, term of patent protection, compulsory licensing, reversal of burden of proof, etc.; and Introduction of product patent protection in all fields of technology from January 01, 2005. (In India’s case this means extension of product patent protection for food, drugs, pharmaceuticals and chemicals). At this stage, the applications for product patents filed and held in “mail box” from January 01, 1995 are also to be taken-up for examination.

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India has complied with the obligations in respect of (i) & (ii) in the following manner:(a)

In respect of obligations effective from January 01, 1995, India has amended the Patents Act, 1970 through the Patents (Amendment) Act, 1999 effective retrospectively from January 01, 1995. This Act provides for a “mail box” to receive and hold product patent applications in the fields of pharmaceuticals and agricultural chemicals and also on fulfillment of certain conditions specified in the law, for grant of exclusive marketing rights (EMRs). It has also been provided in the law that product patent applications received shall not be referred for examination till December 31, 2004.

(b)

In respect of obligations from January 01, 2000 India has further amended the Patents Act through the Patents (Amendment) Act, 2002 passed by Parliament in May, 2002 and notified in June, 2002. The Act has been made effective from May 20, 2003. ♦ As on date, India is fully in compliance with its international obligations under the TRIPS Agreement. ♦ Work is now required to be done in respect of international obligations, which will become due from January 01, 2005 under the TRIPS Agreement. ♦

The amendment to the Patents Act, 1970 that is due from January 01, 2005 will basically be a substantive amendment from the view point of the pharmaceutical and chemical industry as it would introduce a regime of product patent protection in addition to the existing process patent protection for food, pharmaceutical and chemical inventions. The “mail box” applications, which are around 5,000 will also be taken up for examination from January 01, 2005. Apart from the implications for the chemical and pharmaceutical industry, this amendment also has other implications on pricing of drugs/medicines, availability of drugs/medicines, public health issues and implications for the Indian industry that has hitherto basically operated (and flourished) through reverse engineering of drugs and pharmaceuticals emerging from the R&D efforts of mostly MNCs.

India has realised the fact that it is paramount to appreciate that for this set of amendments the time frame is most crucial. Any slippage in meeting the January 01, 2005 deadline will invite retaliatory action under the WTO disputes mechanism because the stakes for different sectors of the pharma industry (especially MNCs of developed countries) are much higher. Having availed of the entire transition period provided under the TRIPs Agreement, India will have no legal leg to defend its default. The past record of delayed implementation will also not help its case and there will also be an erosion of India’s credibility in the international field. In the above background and given the sensitivities surrounding patent issues, Government of India is carrying out extensive

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and broad-based country-wide consultations with all stake-holders and interest groups.

Patent Legislation The Patents Act, 1970 & The Patents Rules 1972, effective from April 20, 1972, govern the Patent system in India. Subsequently the Patents Act, 1970 is amended effective from January 1, 1995 & The Patents Rules, 1972 is amended effective from June 2, 1999. Patents Amendment Act 1970 is further amended in 2002 (P/A: 2002) which came into force w.e.f. 20th May 2003. Now the third and final tranche is due to address the remaining outstanding issues. Patents are included in the portfolio of Department of Industrial Policy & promotion, Ministry of Commerce & Industry.

Safeguards Provided in the Legislation (a) Exclusions from patentability ♦ patents contrary to public order, morality or which cause serious prejudice to human, animal or plant life or health or to the environment; patents on plants and animals including seeds, varieties and species and essentially biological process; ♦ patents on traditional knowledge; and protection of traditional knowledge and bio-diversity; ♦ a mathematical or business method or a computer program per se or algorithms. ♦ a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever included cinematography works and television productions; ♦ a mere scheme or rule or method of performing mental act or method of playing game; ♦ a presentation of information; ♦ topography of integrated circuits. (b) Protection of traditional knowledge ♦ by providing for opposition/revocation where the invention is anticipated by the traditional knowledge (oral or otherwise) available within any local or indigenous community in India or elsewhere. (c) Redrafting of Compulsory Licences provisions ♦ by extending the scope of general principles for working of inventions to address the public health concerns ♦ by providing grounds for grant of compulsory license viz.: non-working of inventions and non-availability of patented inventions at reasonably affordable price.

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(d) Reintroduction of national security Provisions ♦ by reintroduction of Section 39 relating to prohibition to apply for patents relevant for defence purposes outside India. Provisions to check prices and ensure prompt availability of patented products after the expiry of the term of patent ♦ by introduction of Bolar provision to ensure prompt availability of products particularly generic drugs immediately after expiry of the term of patent; ♦ by adoption of parallel import provisions to check prices. (e)

(f) Introduction of Pre-grant publication and deferred examination system ♦ by introduction of international practices such as publication of application after 18 months and examination of application on request. This would ensure the availability of the technology to the researchers, inventors and general public for doing further research; ♦ by providing for deferred examination to avoid accumulation of unexamined patent applications. (g) Protection of Biodiversity ♦ by making disclosure of source and geographical origin of the biological material mandatory ♦ by providing for opposition/revocation where applicant does not disclose or wrongfully mentions the source o ♦ r geographical origin of biological material used for the invention

2.

Trade Marks

Trade marks have been defined as any sign, or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. Such distinguishing marks constitute protectible subject matter under the provisions of the TRIPS Agreement. The Agreement provides that initial registration and each renewal of registration shall be for a term of not less than 7 years and the registration shall be renewable indefinitely. Compulsory licensing of trademarks is not permitted. Legislation India affords full protection to trade marks under the Trade Marks and Merchandise Act. The Indian law of trademarks is protected by the Trade & Merchandise Marks Act, 1958. A new statute i.e. the Trade Mark Act, 1999 has been enacted in India to bring it in conformity with the TRIPs Agreement, to which India is a signatory. Indian Trademarks Act, 1999, came into force on September 15, 2003. India has made a step towards fulfilling its international obligations. Consequently, the Indian trademark law has now become fully compatible with the International standards laid down in the TRIPs Agreement. The New Act primarily consolidates and amends the old Trade & Merchandise Marks Act, 1958 and provides for better protection of goods and services. 11

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On the whole the Trademarks Act, 1999 has removed the inconvenient provisions of the old Act and has fostered the rights of the traders and other service providers significantly. It also sends a warning to infringers. This Act not only makes Trade Marks Law TRIPs compatible but also harmonizes it with International systems and practices. Convention Application and International Treaties India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person from a convention country, may within six months of making an application in his home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his trademark in India, from the same date on which he or she made application in his home country. Trademark issues are handled by Department of Industrial Policy & promotion, Ministry of Commerce & Industry.

3. Copyrights India has a very strong and comprehensive copyright law based on Indian Copyright Act. 1957 which was amended in 1981, 1984, 1992, 1994 and 1999 (w.e.f.January 15, 2000). The amendment in 1994 were a response to technological changes in the means of Communications like broadcasting and telecasting and the emergence of new technology like computer software. The 1999 amendments have made the Copyright Act fully compatible with TradeRelated Aspects of Intellectual Property Rights (TRIPS) Agreement. & fully reflects Berne Convention. The amended law has made provisions for the first time, to protect performers’ rights as envisaged in the Rome Convention. With these amendments the Indian Copyright law has become one of the most modern copyright laws in the world. Moreover, India is signatory to both the International copy- right conventions i.e. the Berne Convention of 1886 and Universal Copyright Convention of 1952. India is also an active member of WIPO and UNESCO.. Indian representatives have taken part in the international copyright conferences putting forward the Indian point of view and thus helping in getting proper amendments made in the interests of developing countries. Much credit goes to India for getting the 1971 Paris Act, which recognizes the needs of developing countries and given a special treatment for that. During the last two decades the Government of India has taken a number of measures towards the implementation and enforcement of copyright law. Under the Ministry of Human Resources Development a special Copyright Enforcement Advisory Council has been set up in which the heads of police from all the States 12

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of India participate and join forces to see to it that copyright is properly enforced. These developments have made a check on copyright infringement, by and large quite effective. The Federation of Indian Publishers has Copyright Council, which organizes training courses in copyright for the benefit of publishers and authors all over the country from time to time with assistance from the Ministry of Education and sometimes World Intellectual Property Organization (WIPO).Recently, the Federation of Indian Publishers (FIP) in collaboration with the ‘Authors Guild of India’ have established ‘Indian Reprographic Rights Organization’ for the protection of the interests of copyright holders in India and abroad and also to act as a Collecting Society. Being a member of the International Publishers Association (IPA) Indian publishers take an active part in the International Publishers Copyright Council (IPCC) from time to time. In the Indian law, copyright falls into ‘public domain’ 60 years after the death of the author. Copyrights Issues are handled by Department of Book Promotion & Copyrights. Ministry of Human Resource Development.

4. Geographical Indications Geographical Indications of Goods are defined as that aspect of industrial property which refers to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness, which is essentially attributable to the fact of its origin in that, defined geographical locality, region or country. Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was part of the Agreements concluding the Uruguay Round of GATT negotiations. A new law for the protection of geographical indications, viz. the Geographical Indications of Goods (Registration and the Protection) Act, 1999 has also been passed by the Parliament and notified on 30.12.1999 and the rules made there under notified on 8-3-2002. The Act has come into force from 15th September 2003. Geographical Indications issues are handled by Department of Industrial Policy & promotion, Ministry of Commerce & Industry.

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5. Industrial Designs In 1911 the Designs Act was passed by the then British Government in India. The Designs Act of 1911 governs industrial Designs. The registration of a design confers on the registered proprietor the right to take action against third parties who apply the registered design without license or consent. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for. As a developing country, India has already amended its national legislation to provide for these minimal standards. The existing legislation on industrial designs in India is contained in the New Designs Act, 2000 India had achieved a mature status in the field of industrial designs and in view of globalization of the economy. The present legislation is aligned in view of the changed technical and commercial scenario and made to conform to international trends in design administration. This replacement Act is also aimed to inact a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields. Industrial Design issues are handled by Department of Industrial Policy & promotion, Ministry of Commerce & Industry.

6. Plant Variety Protection TRIPS provisions of WTO Agreement makes it mandatory to the member countries to provide protection for the new plant varieties. TRIPS provisions have given the member countries two options for the protection of new plant varieties (I) under the Patent law itself and (ii) by a separate system (called the Sui generis system). India has adopted for the second category namely Sui generis system. Accordingly Indian Parliament has passed the “Protection of Plant Varieties abd Farmers Rights Act 2001”. and The Protection of Plant Varieties and Farmers’ Rights Rules, 2001.

7. Utility Models Utility patent system of protection can be termed as a second tier patent system that, as compared to standard patent, can provide quicker grant of rights, for limited / lessor period, for lower level or incremental inventions / innovations and at a lesser cost. This system of protection is expected to engender innovative activities indigenously while provide a form of Intellectual Property Rights (IPR) protection for small and medium enterprises (SME) or local industries. 14

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It is understood that at least 50 other countries including Japan, Germany and Australia have introduced a second-tier system of protection. There is no Utility Model Law in India but it is under consideration.

8. Protection for Living Organisms Due to the dramatic developments in the ability to select and manipulate genetic materials, interests have been developed in the commercial use of living organisms. According to the TRIPS provisions, all member countries should provide protection for new microorganisms. Accordingly the Patent Amendment Act 2002 provides protection for new microorganisms.

9. Topographies of Semiconductors Extends to protection of “layout-designs” i.e. layout of transistors, and other circuitry elements including lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit. Governed by The Semiconductor Integrated Circuits Layout-Designs Act, 2002

10.Traditional Knowledge Traditional knowledge is in the public domain and should, therefore, not qualify for patents. This is indeed what happened with turmeric and might well have occurred with pigeon pea extracts and ngali nut oil. But for resolution of the issue, there has to be a database and computerisation of traditional knowledge. While creating a database of knowledge handed down orally is difficult, this constraint is responsible for many of India's patent-related problems. While existing traditional knowledge is not patentable, increments to knowledge can indeed be patented, as they are in the US. The database of the National Innovation Foundation (NIF) demonstrates that India is not lacking in such incremental addition to traditional knowledge. It is paradoxical that despite two amendments to the Indian Patent Act 1970amendment 1999 and 2002, such inventive components of traditional knowledge cannot be patented in India. Small innovators have to file for patents in the USPTO, with higher application fees and transaction costs. Traditional knowledge cannot be patented if documented under the TRIPS agreement of the WTO. That is why neem and haldi products when patented by the USPTO were revoked once India proved that these were the products of Indian traditional knowledge. One of the major issues needing resolution is the protection of traditional knowledge under a new "sui generis" system.

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Dr R. A. Mashelkar, Director-General of the Council for Scientific and Industrial Research (CSIR) and Secretary, Science and Industrial Technology, has repeatedly emphasized that there is much for India in the intellectual property rights. However, exploitation requires a patent culture and tie-ups, because commercialization cost are significant. The CSIR has already undertaken the documentation of traditional knowledge so that it is available for prior art search. Government should extend all-out support to this organization. Efforts are being made to make the third amendment to the Indian Patent Act 1970 to automatically patent documented traditional knowledge so that foreign countries do not infringe the right to Indian biodiversity.

Modernisation Initiatives ♦

Government has taken up comprehensive modernisation of intellectual property administration to complement legislative matters The amount spent and committed is indicated below: (Rupees in Crores)

Scheme

Ninth Plan Expenditure Expenditure in 2002-2003

Modernisation of Patent 21.60 Offices (including Designs Office)

25.00

Allocation for 2003-04

Tenth Plan allocation

35.00

92.55

Modernisation of Patents and Designs Offices ♦

The infrastructure in existing and hired accommodation for Patent offices in Delhi, Kolkata, Chennai and Mumbai have been fully modernized and operationalised. A completely modernized and computerized Designs Office in Kolkata has been made operational.

♦

Action is underway to set up Integrated IP offices in each of the four metro cities so as to house all activities in one building. The NBCC has been assigned the turnkey projects for operationalising new offices by 2004. •A

logo for IP administration has been designed and put into use. ♦

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A website (http://www.ipindia.nic.in) of IP offices has been launched. This is being redesigned to make it more user-friendly.

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Initial level of computerization completed to generate computerised information about status of patent applications; comprehensive computerization is underway. This is being done by C-DAC.

♦

227 additional posts of Examiners of Patents have been created. 62 Examiners have already been recruited; offer of appointment to 113 candidates have been issued and filling up of remaining posts is underway.

♦

An Intellectual Property Training Institute (IPTI) has been established at Nagpur to provide training to newly recruited Examiners and others engaged in the field of intellectual property rights.

♦

Online search facilities have been established and improved novelty search ensured through connectivity to international databases also.

Work manuals for IP offices have been prepared to ensure uniformity in the operation. ♦ The current output of patent offices vis-a-vis the year 1999-2000 has nearly trebled. This has gone up from 2824 cases in 1999-2000 to 9538 cases in the year 2002-03. ♦

♦

With the consolidation of work and induction of new Examiners, the overall performance will improve further and it would be possible to ensure grant of patent rights within a timeframe comparable to international levels and consistent with the statutory provisions.

♦

The problem of backlog of pending patent applications has also been addressed through legislative measures contained in the Patents (Amendment) Act, 2002 which introduced examination on request system in place of examination of all' applications.

♦

Digital database of over 1,00,000 patent records and 48,000 design records prepared so far. A searchable database will be put on the website.

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IPR at CII Objective •

To enable Indian Industry enhance competitiveness through Technology and IPR

•

To promote Creativity & Innovation

IPR Activities 1. Policy: ♦ Position papers on Patents, Utility Patents, Trademarks, GI, Biodiversity, Software Patenting etc being developed and will be submitted to DIPP. ♦ To work with Ministry of Industry/DIPP on the next amendment of Patents Act to fall in line with TRIPs/WTO. ♦ To discuss and take up key issues in other intellectual property area ♦ To discuss/take up policy issues connected to enforcement of IP ♦ To play a proactive role at international level policy initiatives (WIPO/WTO Forums) in key areas of interest to India(PCT, Law of Patents/SCP etc.

2. Major events : ♦ Technology, Innovation & IPR Week, October 2003, Hyderabad ♦ National Seminar on Enforcement of Copyrights, Nov 2003, New Delhi ♦ International Conference on Creativity & Invention : Next Major Economic Activity, March 2003, New Delhi. ♦ International Conference on combating counterfeiting : Strategy & Practice, January 2003, New Delhi ♦ International Conference on IPR September 2002

3. Awareness / Training Programmes : ♦ ♦ ♦ ♦

Seminar on PCT Training Programme on Management of Intellectual Property Training Programme on IP Valuation & Taxation/Amortisation Training Programme on Patent Drafting/Patenting process

4. IPR Information, protection & advisory services : IPR Facilitation services like Patent Information, Search & Analysis, Drafting & Legal services, filing assistance, facilitating patent/marks etc, registration in USA and Europe through CII-overseas law firms partnerships. 18

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Contact details of Important links Office of the Controller General of Patents, Designs and Trade Marks OFFICE NAME

OFFICE ADDRESS

OFFICE PHONE / FAX / EMAIL / TELEGRAM

NAME OF CONTACT PERSON

Office of the Controller General Of Patents, Designs & Trade Marks

C.G.O. Building, 101, Maharshi Karve Road, Mumbai – Pin-400 020. India

(91)(22) 22017368 (91)(22) 22039050 Fax:(91)(22) 22053372

Dr. S Chandrasekharan Controller General of Patents, Designs & Trade Marks

OFFICE PHONE / FAX / TELEGRAM

NAME OF CONTACT PERSON

Patent Office and its Branches OFFICE NAME

OFFICE ADDRESS

Patent Office Kolkata (Head Office)

The Patent Office, Nizam Place, 2nd M.S. O. Building, (5-7) floors, 234/4 Acharya Jagdish Bose Road, Kolkata. Pin 700 020, India

(91)(33) 2247 4401 (91)(33) 2247 4402 (91)(33) 2247 4403 (91)(33) 2247 3851 (91)(33) 2240 1353 Fax (91)(33) 2247 3851

Dr. S.K. Pal Assistant Controller of Patents & Designs

Patent Office Branch Delhi

Government of India Patent Office Branch, W-5, West Patel Nagar, New Delhi, Pin 110 008, India E_mail: [email protected]

(91)(11)25871255 (91)(11)25871256 (91)(11) 25871257 (91)(11) 25871258 (91)(11) 25877245 Fax : (91) (11)25876209 (91) (11)25872532

Shri K.S. Kardam Asstt. Controller of Patents & Designs

Patent Office Branch Mumbai

Patent Office Branch Todi Estate, IIIrd Floor, Sun Mill Compound, Lower Parrel, West Mumbai - Pin 400013 India

(91)(22)24925092 (91)(22)24924058 Fax (91)(22)24920622

Shri N. K. Garg Asstt. Controller of Patents & Designs

Patent Office Branch Chennai

Patent Office Branch, Rajaji Bhavan, IIIrd Floor, 'C' Wing, Besant Nagar, Chennai- Pin 600090 India

(91)(44)24901495 (91)(44)24901496 (91)(44)24903686 Fax (91)(44)24901492 (91)(44)24900931 E-Mail: [email protected]

Shri K Venugopal Asstt. Controller of Patents & Designs

Patent Office Chennai Branch Guna Complex, Annexure-II Sixth Floor, No. 443 Annasalai, Teynampet Chennai 600018 (91)(44)24314324

(91)(44)24314325 (91)(44)24314326 Fax (91)(44)24314750

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Shri (Dr.) W.S. Dhumane Deputy Controller of Patents & Designs

Compiled by : Anuradha Mazumdar, Tech/IPR Div., CII

Intellectual Property Rights

Design Registration OFFICE NAME Patent Office Kolkata

OFFICE ADDRESS Patent Office, Nizam Place, 2nd M.S. O. Building, (5-7) floors, 234/4 Acharya Jagdish Bose Road,Kolkata. Pin 700 020, India

OFFICE PHONE / FAX / TELEGRAM

NAME OF CONTACT PERSON

(91)(33) 2247 4401 (91)(33) 2247 4402 (91)(33) 2247 4403 (91)(33) 2247 3851 (91)(33) 2240 1353 Fax (91)(33) 2247 3851

Assistant Controller of Patents & Designs

OFFICES AND ITS E-MAIL ADDRESSES Patent Office Patent Office, Calcutta Patent Office Branch, New Delhi Patent Office Branch, Mumbai Patent Office Branch, Chennai

Trade Mark Registry Trade Mark Registry, Mumbai Trade Mark Registry Branch, Ahmedabad Trade Mark Registry Branch, Delhi Trade Mark Registry Branch, Chennai Trade Mark Registry Branch, Calcutta

Patent Information System Patent Information System , Nagpur

E-mail Addresses [email protected] [email protected] [email protected] [email protected] [email protected] [email protected]

E-mail Addresses [email protected] [email protected] [email protected] [email protected] [email protected]

E-mail Addresses [email protected] [email protected]

Office of Copyrights OFFICE NAME Book Promotion & Copyrights

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OFFICE ADDRESS Ministry of Human Resource Development Deptt. of Secondary & Higher Education Govt. of India Shastri Bhawan New Delhi

OFFICE PHONE / FAX / TELEGRAM

NAME OF CONTACT PERSON

(91)(11) 2338793 Fax: (91)(11)23387934

Joint Secretary BP & CR

Compiled by : Anuradha Mazumdar, Tech/IPR Div., CII