By Vikrant Rana and Shilpi Saurav Sharan
Introduction
The “Action Taken by Government on the Recommendations/ Observations of the Committee contained in its One Hundred and Sixty First Report on ‘Review of the Intellectual Property Rights Regime in India’” was presented to the Rajya Sabha and laid on the table of Lok Sabha on April 6th, 2022.
The Report was presented to the Rajya Sabha by the Chairman of the Department Related Parliamentary Standing Committee on Commerce, The One Hundred and Sixty First Report of the Department Related Parliamentary Standing Committee on Commerce was presented to Rajya Sabha on July 23, 2021.
The Report, running over 150 pages, inter alia suggested a major revamp of the IPR landscape in India while taking note of the reduced number of IP filings in the country in 2019 as compared to its foreign counterparts. The Report emphasized inter alia on the need of IPR awareness in the country, amendments in the IPR laws, active involvement of the State Governments, specific legislation to deal with the menace of counterfeiting and piracy etc.
The details of Review of the Intellectual Property Rights Regime in India (Report no. 161) .
Action Taken Report by DPIIT
In view of the recommendations and observations made in the Review of the Intellectual Property Rights Regime in India (Report no. 161), the Action taken Report has been received from the DPIIT (Department for Promotion of Industry and Internal Trade), which has now been tabled before the Rajya Sabha.
Recommendations by Parliamentary Committee vis-à-vis DPIIT’s Action taken Report
Herein, we present a comparative analysis of the recommendations and observations made by the Department Related Parliamentary Standing Committee on Commerce and the subsequent action taken by the DPIIT are enumerated as under:
| Recommendations accepted by the Government | Recommendation/ Observations | Action Taken |
| Contribution of IPR in Economy | The Committee recommended the
Department to undertake a comprehensive study of the resultant benefits of improvement in IPRs on the economy especially in terms of increase in GDP, employment generation, augmenting forex reserves, and boosting exports.
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The DPIIT in this context reports that in comparison to 42763 Patents filed in 2014-15, there has been 58502 Patents filed in 2020-21 and as compared to FDI inflow of USD 45,148 in 2014-15, there has been FDI inflow of USD 81,973 in 2020-21.
That the CGPDTM has been taking steps to strengthen IPR filing in the country which will spur FDI inflow in the country as well as boost economy. The Department has ensured that it will undertake a study in consultation with stakeholders. |
| Marking of Products as “Patent Pending” | The Committee suggested that labelling of products with ‘patent pending’ would acknowledge their credibility and authenticity, hence yielding marketing benefits to the patentees.
Regarding the absence of such a provision in the current regime, the Department had pointed out that India lacked IP awareness and allowing the status of ‘patent pending’ may invoke a fear psychosis which may have an adverse effect on the innovation ecosystem of the country. |
The DPIIT informs that stakeholders’ consultation with respect to labelling of products as patent pending has been done for inclusion in drafting of Patent Amendments Bill. |
| IPR Awareness | The Committee noted that due to lack of IPR awareness amongst MSMEs about the significance of IPRs as a major business tool, the filing of IPRs by MSMEs is quite low. The Committee recommended that a holistic approach should be taken by the Department for disseminating awareness amongst MSMEs and small businessmen. | In this context, the DPIIT enumerated its consistent efforts towards IPR sensitization, like the initiatives by CIPAM (established under the aegis of DPIIT) towards creating IP awareness. Over 190 IP intensive programmes have been conducted for MSMEs. A Trade Secret Toolkit, has been created to guide Indian businesses especially MSMEs and Start-ups regarding protection of trade secrets. |
| Counterfeiting and Piracy | The Committee was of the view that counterfeiting and piracy were the rising threats to IPRs which should be regulated by taking appropriate measures. It was recommended to stress upon capacity building of enforcement agencies on IP laws including strengthening of IPR cells in State police forces. To establish a Central Coordination Body on IP Enforcement for undertaking coordinative efforts by involving various Ministries, Departments, and Governmental agencies in enforcement and adjudication of IP laws to check IP crimes in the country.
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DPIIT in this regard reported that the Department through CIPAM has been taking initiatives in the form of Anti-Piracy and Anti-Counterfeiting campaigns to
make raise aware of the malpractice and fight it by creating a distinction between the original and the fake product.
Like, conducting various sensitization programs for the judiciary, police and customs.
The Department in association with FICCI has also made an IPR Enforcement Toolkit for Police, which aids in dealing with IP Crimes, in particular, trademark counterfeiting and copyright piracy. A similar toolkit for Customs is also set to be released soon. Further, an advisory has been issued by the Ministry of Home Affairs to all State Police Academies to incorporate IPR in their training curriculum for both regular and in-service police officers.
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| Vacancies in Patent Office | That the Patent Office should be provided with adequate number of officials to expedite the process of patenting. The Committee also noted that the increase in the number of examiners does not commensurate with the increase in the number of applications. | Since last one year, 5 Departmental Promotion Committee Meetings
have been convened for promotion of officers at various levels in the Office of CGPDTM and Vacancy position at various levels has also been reviewed actively in consultation with Department of Personnel & Training, UPSC. |
| Patent Prosecution Highway | In its 161st report the Committee had recommended to explore opportunities in establishing PPH with other nations as well. It was also noted by the Committee that PPH as a significant patent tool should be encouraged with nations in times of pandemic wherein the Covid-19 outbreak had led to rise in filing of innovations in areas of vaccines, pharmaceuticals and medical devices. | The Department in this context reported the status of Japan-India PPH which commenced in November, 2019:
Status at Indian patent office: Application received at IPO – 158 First Examination Report issued – 83 Patents Granted – 56 Abandoned – 2 Refused -1
Status at Japan Patent Office Application received at JPO – 6 Patents Granted – 3
The Department also reports that a PPH proposal has been received from Denmark and a working group has been formed. |
| The Patent Act, 1970 | The Committee suggested amendments to the Patent Act, 1970 like provision of a safeguard mechanism against the arbitrary exercise of power by the Controller in declining patents and amendment of Section 104 of the Act to promote establishing of alternative dispute resolution mechanism in India Protection against Ever-greening, etc.
The Committee had also recommended incorporation of a check and balance mechanism in the Act, for granting of patents to socially useful inventions or innovations. It was inter alia recommended to explore the feasibility of granting patents to non-living substances occurring in nature under the Act and its subsequent impact on public interest. The Committee also recommended the upgradation and maintenance of the website of IP Office. |
As per Department’s report, Stakeholders’ consultation has been taken on said amendments to the Patent Act and for inclusion in the drafting of Patent Amendments Bill.
With respect to upgradation and maintenance of IP Office website, the Department reports that necessary directions in this regard have been issued to the CGPDTM.
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| Protection against Ever-greening | The Committee was of the view that India must not compromise on the patentability criteria under Section 3(d) since India as a sovereign nation has the flexibility to stipulate limitations on grants of patents in consistence with its prevailing socio-economic conditions.
That in order to avert any misinterpretation of the provision, the Department should examine the aspect on giving an expansive meaning to Section 3(d) for giving further clarity. |
As per Department’s report, Stakeholders’ consultation has been taken on said amendments to the Patent Act and for inclusion in the drafting of Patent Amendments Bill. |
| Trademarks Act, 1999
Curtail time period of filing opposition
Modernization of trademark offices
Section 115 of Trademark Act, 1999
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The Committee recommended to curtail the time period of filing opposition against a trademark application from 4 to 2 months during which the application is in public.
Committee also recommended to take steps in modernization of trademark offices and workplaces through digitization.
The Committee had also pointed out about cumbersome procedures with respect to search and seizure operations in trademark infringements under Section 115 of the Act. It was recommended that the procedure under the provision should be streamlined for expediting investigations. |
As per Department’s report, Stakeholders’ consultation has been taken on said amendments to the Trademark Act and for inclusion in the drafting of Trademark Amendments Bill.
Department reports that to address this concern, e-TMR project is under development.
With respect to expediting of search and seizure procedure under Section 115, the Department states that proposal to include a platform in e-TMR system, wherein Police officers can file online request under Section 115 and concerned officer can provide opinion within 24 hours, is being examined in consultation with CGPDTM. |
| Copyright Act, 1957
Changes in Section 51(1) of the Act
Amend Section 31D |
The Committee recommended to facilitate a fair and equitable ecosystem of literary culture in the country by bringing in necessary changes in Section 51(1) of the Act.
The Committee also recommended the Department to amend Section 31D for incorporating ‘internet or digital broadcasters’ under statutory license in wake of the rise in digital or OTT platforms.
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The Department has reported that inter-ministerial consultations are being held to resolve the concern.
The Department also reiterated the acts which do not constitute copyright infringement under Section 52 of the Copyright Act, and also to Delhi High Court ruling in the DU photocopying case, wherein the Court held that preparation of course packs i.e. compilation of photocopies of the relevant portions of different books prescribed in syllabus, and their distribution to the students by educational institutions does not constitute copyright infringement as long as the inclusion of the works was justified by the purpose of educational instruction.
With reference to this recommendation pertaining to Section 31D, the Department has commented that in view of technological advancement an office memorandum was issued in 2016 stating that- “the provisions of section 31D are not restricted to radio and Television broadcasting organisations only but cover internet broadcasting organizations also.” However, the memorandum became subject matter of contention in a case before Bombay High Court, wherein the Court observed that the impugned Office Memorandum lacked a ‘statutory flavour’ and could not prevail over an interpretation which is drawn under the Act and the Rules. The interpretation of Section 31D. Presently, the instant matter is sub judice before the Division Bench of Bombay High Court. |
| Geographical Indications | With reference to GI, the Committee had recommended the GI Registry to issue periodic advisories consisting of necessary information on compliance requirements for the assistance of GI applicants which would check undue delay and pendency in approving GI
registrations. |
The Department reports that the GI Registry has already worked on advisories in the form of GI Manual, guidelines regarding filing of GI applications, registration process and FAQs on GI the general information of public and the same is hosted on official website. |
| IPR in Pharmaceuticals | The Committee expressed the concern that out of 16,134 pharmaceutical patents filed during last 5 years, only 4,345 were granted patents. Hence,
necessary steps shall be taken to expedite the process of examining/ granting patents. |
In this context, the Department reported that various initiatives have been taken like amendments in rules, modernization of Patent
Office, manpower augmentation, and use of IT enabled processes for expedited examination and grant of patents applications. |
While the Committee accepted the Actions reported to be taken with respect to the recommendations/ observations made aforesaid, there were certain parameters for which the Committee does not wish to pursue the recommendations/ observations in view of Department’s reply, like National IPR Policy. With respect to the IPR Policy, the Committee had recommended its review should be undertaken and that its re-assessment was imperative in view of emerging trends in spheres of innovation and research that which require concrete
mechanisms to protect them as IPRs.
The Department apart from the aforesaid parameters has also rendered its Action taken report with respect to Traditional Knowledge, IPRs in Agriculture etc. As mentioned earlier, the Department Related to Parliamentary Standing Committee on Commerce has considered the draft Report and adopted the same on April 5, 2022.
The recommendations of the Committee and the Action taken report of the DPIIT, if implemented in true spirit will make India’s IPR regime a robust one as it not only caters to commercial and economic concerns but also takes heed of the interests of the public at large.
This article was first published on Lex Witness.
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