The office of the Controller General of Patents, Designs and Trademarks (CGPDTM) has initiated a Pilot Project to develop and test a system of transfer of files among different branches of Indian Patent Office (IPO). The objective of this project is to utilize the expertise of the officers available within the office to the maximum possible extent and to develop a system of auto-allocation based on workload.
As evident from the dynamic utilities available on IPO’s website, the Electrical/Electronics Group of IPO Delhi, Mumbai, Kolkata and Chennai are issuing for RQs filed in August 2008, November 2009, October 2009 and June 2009 respectively. It has been observed that there is pendency of examination at the Delhi Office.
Thus in order to expedite the examination process, the Delhi files will be referred to examiners belonging to the Electrical / Electronics group at other branches of the IPO without reference to their location. The files will be transferred to other offices in accordance with Rule 4(3) of the Indian Patents Rules 2003.
Rule 4(3): Notwithstanding anything contained in sub-rule (2), the Controller may transfer an application for patent so filed, to head office or, as the case may be, branch office of the Patent Office.”
This pilot project endeavors to take the benefit of the said amendment for balancing workload at different IPO locations and for examination of requests in seriatim in similar technology groups.
The Project Plan in this regard is as below:
- Through this project, the IPO will initially take 100 patent applications belonging to the Electrical/Electronics Group having the oldest request for examination.
- IPO will ensure that all the files to be transferred are classified correctly and relate to Group-3 and ensure that each and every paper is digitized and uploaded successfully. No transfer of physical files maintained at the original location i.e. the Patent Office, Delhi shall be allowed. This will also gear up the office towards its aim of achieving a paperless environment.
- Once the files are allotted for examination, the concerned Examiners will examine the patent applications in accordance with the provisions of the Act and Rules and submit their reports to the concerned Controllers for the generation of First Examination Reports (FERs), which will be forwarded/communicated by such concerned Controllers to the Applicants or authorized agents directly from the office where the FERs were generated. A copy of the FERs shall also be marked to Patent Office, Delhi for record.
- The FERs will bear a note that the reply is required to be submitted at the Patent Office, Delhi. If the Applicant desires to attend the hearing, in person, at the new location, an “No Objection Certificate” (NOC) will have to be submitted by the concerned agent/applicant to the effect that he has no objection to attending the hearing in person at the new location. If not so desired, Delhi office will make available the facility of video conferencing to the agent/applicant at the original location, i.e. Patent Office, Delhi, whereby the Applicant will communicate with the Controller at the new location through video conferencing.
- During the course of hearing conducted in person, any document submitted before the Controller, which is relevant for deciding the outstanding matter(s) may be accepted by that Controller at the new location, provided that the agent/applicant files the same document at the Patent Office, Delhi without fail in line with the office policy that all the documents forming part of the record shall be submitted online or at the counter, fee or non-fee, of the Patent Office. In case of non-submission of such documents at the Patent Office, Delhi, the concerned Controller will proceed to decide the matter on merits on the basis of submissions made during the course of hearing, without considering the contents of the documents handed over personally during the hearing. Such documents, if they are not submitted at the counter, shall not form part of the official record.
- In case of a hearing held in person at the new location, an option shall be provided to the applicant to submit the written submissions within 15 days at the Patent Office, Delhi, failing which, such submissions shall not form part of the official record and the matter will be decided on merits.
- A pre-grant opposition and any further related documents shall also be filed at Delhi. During the course of proceedings, if a hearing is offered, care will be taken to ensure that the applicant as well as the opponent(s) is at the same location i.e. in case of hearing in person, all the parties shall be present in person at the new location. Same principle shall apply to video conference. In case of lack of consensus among the parties, the hearing shall be conducted via video-conference. It is reiterated that all the documents shall be filed at Delhi.
- All after-grant proceedings in respect of the cases under the pilot project will be dealt with at the Patent Office, Delhi only.
Co-operation of stake holders:
A meeting of concerned stakeholders in this matter was held at IPO Delhi on July 02, 2014. They had small apprehensions with respect to hearings and/or the time of giving NOC, which was clarified by the Controller that the NOC shall have to be given in the beginning so as to plan logistics for arranging video conferencing slots.
Separate mail/letter in this regard is being sent, quoting application numbers to each one of them.
The stakeholders are requested to cooperate in this initiative of the office which is in the larger interests of the public. All the agents/applicants of the concerned 100 patent applications are requested to submit NOC latest by July 11, 2014, to plan the hearing facilities well in advance so that this service can be further improved and implemented in a full-fledged manner.