You are currently browsing the monthly archive for July 2009.

If you are a patent applicant or patent agent and by foresight had provided your email id to the patent office, do not be surprised if your Email inbox has an email from the Indian Patent office. The Controller General of Patents, Designs and Trademarks (CGPDTM) Mr. P.H Kurian had issued a circular (here) (dt :19th June) notifying that effective July 1, all communications including notices and examination reports to patent applicants, patent agents shall be sent through electronic mail.

It is said to be outcome of the efforts of Consultative Working Group on Patents, Designs, Trade Marks system in India constituted by the Federation of Indian Chambers of Commerce and Industry FICCI and their consultation meetings with the CGPDTM – Mr. P.H Kurian.

Since this notification was published, the press and public have been celebrating this development. You may read some of the blogs (ones I respect and regularly read) writing about it here (SpicyIP) and here (PatentCircle).

No doubt that this measure is a step in the right direction and the only way forward from here, it remains to been seen how the practical hiccups arising on implementation of this decision are sorted out.

Two weeks past effect date and I haven’t yet received any such communication till date, though we still receive number of hard copy communications for the Patent Office each day. A Zeenews report (here) quotes Mr. P.H. Kurian stating that once the formalities are completed, the Patent Office will start issuing correspondences related to a patent application in electronic form and it is expected to start implementing by end of this month. Though it will not be clear on what the the ground level implementations are, but for now it raises certain questions on its practical applicability.

  1. Will the communication be followed by a hard copy confirmation with the enclosure?

    Presently, the Examination reports are issued as hard copies and the original documents including specification, forms and drawing sheets are enclosed with the Report. After implementation of email communication, what will happen to the enclosures, will it be followed by hard copy mail?

    Patent practitioners may appreciate where I am coming to.

    – Many Examiners have the practice of marking the specification and claims and referring to them in their report. Eg. ‘ Claim 1 may be reworded to delete the referred terms’ or ‘The claims as marked are not clear with respect to the marked terms, clarify in this regard. These objections does not make sense without the specification/claim pages having said marking. If someone had the pleasure of going through the objections, they would be able to appreciate that often the marking are more explanatory than the report themselves which otherwise would be misinterpreted.

    – The application number is received only after filing the application, therefore during filing it is not possible to include the application number in the Form and Drawing sheets. The only chance the applicant has to include them is during filing a reply to the Examination Report. If the originals are not returned, the applicant is forced to file fresh forms and drawing sheets, which sometimes run to pages, and that too in duplicate.

    – The circular also refers to Notices, which would include notice of opposition being sent by email. In such cases how will the patent office forward the opposition notice (including cited documents) to the applicant?

  2. The Rules require the electronic transmission duly authenticated. Therefore the emails must be digitally signed. This raises a few questions

    – Who will digitally sign the emails? Will all emails be signed by CGPDTM or Asst/Dept Controller or the Examiners?

    – Will all email be sent by a single email id or will each Examiners/Controllers send it through separate email ids?

    – IT knowledgeable person would understand that an email once digitally signed must be sent directly to the Agent/Applicant’s email. It is not possible to forward a digitally signed email to a dispatch for them to forward it with the same signature, unless they have a digital signature at their end. So does the Patent office have the infrastructure to support direct email from Examiners to Applicants? Or if the dispatch digitally signs it, how authenticated is it?

    – If the email is followed by hard copies, who keeps a track of them? The patent office procedure, does not provide any details on dispatch department.

  3. In the Zeenews report, (referred above), FICCI’s Director General Amit Mitra was quoted as stating “Introduction of electronic correspondence is a boon for stakeholders as it will ease the task of patent prosecution in India, especially for applicants residing in foreign countries,”

    This would be against the Act/Rules, since foreign applicants cannot apply for a patent without address of service in India. However this statement may be true in case an applicant provides an Indian address but has moved abroad after filing.

    In such cases what about the enclosures? Will the as email be self sufficient or just act as a notice for something to come.

  4. The CGPDTM in his notice had asked all the agents and applicants who have not provided their email id to send them to the respective patent office. I pity the technical heads of each office and the personnel who would now receive a barrage of emails asking them to update ids to all applications already filed. How do they plan on updating thousands of applications with email id’s? The CGPDTM may have just stopped by asking the agents and proceeding with the future applications and not updating existing applications which would make a further workload on the already overloaded staffs.

Would appreciate comments on what the readers feel in this issue or the problems they think this will lead to, both from the Patent Office’s and a practitioners perspective. Will update on this matter after receipt of the electronic communication starts.

For now, lets celebrate the progress.

Patently Yours