Day: May 15, 2024

The landscape of patent filing in India has witnessed significant changes over recent years, influenced by global economic shifts, advancements in technology, and evolving legal frameworks. Two primary routes dominate the patent filing process in India: the conventional route and the national phase route under the Patent Cooperation Treaty (PCT). Understanding recent trends in these routes provides valuable insights for inventors, businesses, and legal professionals.

Conventional Route Trends

The conventional route, which involves filing a patent application directly with the Indian Patent Office within 12 months of the priority date, has seen a steady increase in activity. This route is often favoured by domestic applicants and businesses seeking to protect innovations promptly within the country.

Growth in Domestic Applications: There has been a noticeable rise in patent applications from Indian inventors and small to medium enterprises (SMEs). This trend is fuelled by increased awareness of intellectual property rights and government initiatives such as the “Startup India” campaign, which offers reduced filing fees for startups.

Technological Advancements: Sectors like biotechnology, pharmaceuticals, information technology, and artificial intelligence have dominated recent filings. Innovations in these areas reflect India’s growing prowess in high-tech and research-driven industries.

Streamlined Processes: The Indian Patent Office has made efforts to streamline the patent examination process, reducing the time taken to grant patents. Initiatives like the expedited examination for startups and the electronic filing system have contributed to more efficient processing of applications.

National Phase Route Trends

The national phase route, allowing international applicants to enter India’s patent system under the PCT within 31 months from the priority date, continues to be a popular choice for foreign entities seeking protection in India.

Increase in International Filings: India’s robust market potential and favourable IP environment have led to an increase in national phase entries. Companies from the United States, Europe, Japan, and China are prominent users of this route, reflecting India’s importance as a key market for global innovation.

Diverse Technological Domains: Similar to the conventional route, the national phase route has seen a surge in applications in advanced technology sectors. Notably, there has been significant activity in renewable energy technologies, medical devices, and consumer electronics.

Legal and Regulatory Developments: Recent amendments in Indian patent laws, aimed at harmonizing with international standards, have made the national phase route more attractive. The introduction of measures like the Patent Prosecution Highway (PPH) with Japan has facilitated faster processing of applications, thereby encouraging more international filings.

Analysis of recent filing trends for both routes

Recent filing trends for patents in India, through both the conventional and national phase routes, indicate a robust growth in domestic and international patent activity. The conventional route has seen a rise in applications from Indian inventors and SMEs, spurred by government initiatives and heightened IP awareness, with notable filings in biotechnology, IT, and AI sectors. Concurrently, the national phase route under the Patent Cooperation Treaty (PCT) has attracted increasing international interest, particularly from the US, Europe, Japan, and China, driven by India’s expanding market potential and improved regulatory environment. Technological advancements and streamlined processes, such as expedited examinations and electronic filing, have further enhanced the appeal of patenting in India.

Impact of technological advancements on filing strategies

Technological advancements are significantly reshaping patent filing strategies, compelling inventors and companies to adopt more sophisticated and proactive approaches. The rise of cutting-edge fields such as artificial intelligence, biotechnology, and renewable energy has led to a surge in complex and interdisciplinary inventions, necessitating comprehensive prior art searches and strategic global filings to secure broad and robust protection. Additionally, advancements in digital tools and patent analytics enable applicants to identify optimal filing routes, anticipate market trends, and streamline the drafting and submission processes. As a result, the integration of technology into IP management not only enhances the efficiency and precision of patent filings but also strengthens the strategic positioning of patents in a competitive marketplace.

Predictions for future trends in patent filings

Future trends in patent filings are likely to be characterized by an increasing emphasis on emerging technologies and sustainability. Innovations in areas such as artificial intelligence, quantum computing, biotechnology, and green technologies are expected to dominate patent landscapes, driven by ongoing research and global efforts to address environmental challenges. Additionally, the patent filing process will continue to evolve with advancements in digital tools, such as AI-powered patent analytics and blockchain for secure and transparent IP management, making the process more efficient and accessible. Geographic trends may also shift, with developing countries like India and China playing a more prominent role in global patent activity. As businesses and inventors seek to protect their innovations in a rapidly changing world, strategic, international, and collaborative patent filings will become increasingly crucial.

Challenges and Opportunities

Despite the positive trends, several challenges remain. The backlog of pending applications, although reduced, still poses a hurdle. Additionally, ensuring consistent quality in patent examination is critical as the volume of applications grows.

However, these challenges also present opportunities. Continued investments in digitization, capacity building within the Patent Office, and fostering a more innovation-friendly ecosystem can further enhance India’s position as a global patent filing destination.

Conclusion

The evolving landscape of patent filing in India, encompassing both the conventional and national phase routes, highlights a dynamic interplay between domestic innovation and international interest. The conventional route has become increasingly popular among Indian inventors and SMEs, driven by government initiatives and a growing awareness of intellectual property rights. Meanwhile, the national phase route under the PCT attracts substantial international filings, reflecting India’s significance as a key market for global innovation. Technological advancements are reshaping filing strategies, enabling more efficient and strategic patent management. Future trends are expected to focus on emerging technologies and sustainability, with India poised to play an even more prominent role in the global patent arena. While challenges such as application backlogs and quality consistency remain, they also present opportunities for further improvements. By continuing to invest in digitization and capacity building, India can enhance its position as a leading destination for patent filings, benefiting inventors and businesses worldwide.

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What is NBA?

NBA stands for National Biodiversity Association which is a statutory body that was established in 2003 by the Central government for the purpose of the Biological diversity Act, 2002 to regulate access and equitable sharing of benefits arising from any biological resources.

What is a Biological Resource?

As per Section 2(c) of the Biological Diversity (Amendment) Act (BDA), 2023, “biological resources” includes plants, animals, micro-organisms or parts of their genetic material and derivatives (excluding value added products) with actual or potential use or value but does not include human genetic material wherein “derivative” means a naturally occurring biochemical compound or metabolism of biological resources, even if it does not contain functional units of heredity.

When Do We Need NBA Approval?

It is mandatory to apply for NBA approval under BDA 2002 through Form 3 with appropriate fee (INR 500) before patent application in or outside India under the following condition:

• If the invention that is to be patented is based on any research or information on a biological resource wherein the source and geographical origin of the biological material is from India.
• If the biological resource is a plant, before applying for plant breeders right in any country other than India.

The NBA approval shall be obtained prior to the grant of the Patent provided that the NBA shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof. In case of foreign jurisdiction, NBA approval shall be granted only to those countries that are intimated in the Form 3.

Relevant Sections

• As per Section 10 (4)(ii) of The Patent act, 1970, an applicant must disclose the source and geographical origin of the biological material in the specification, when used in an invention.
• Section 6 of BDA act, 2023:

(1A) Any person applying for any intellectual property right, by whatever name called, in or outside India, for any invention based on any research or information on a biological resource which is accessed from India, including those deposited in repositories outside India, or traditional knowledge associated thereto, shall register with the National Biodiversity Authority before grant of such intellectual property rights.

(1B) Any person who has obtained intellectual property right, by whatever name called, in or outside India, for any invention based on any research or information on a biological resource which is accessed from India, including those deposited in repositories outside India, or traditional knowledge associated thereto, shall obtain prior approval of the National Biodiversity Authority at the time of

commercialization.

• As per section 19 of BDA act, 2023, Any person who intends to apply for a patent or any other form of intellectual property rights, whether in India or outside India, referred to in of section 6 (1), may make an application to the National Biodiversity Authority in such form, on payment of such fee, and in such manner, as may be prescribed.

When Do We Not Need NBA Approval?

NBA approval is not required in following cases:

• If the biological resource is neither obtained from India or sources from India
• If the invention does not relate to a biological resource defined under the BDA act, 2002 such as Value-added products, Biowaste and synthetically prepared biological material.

Relevant Section & Definitions

• As per Section 2(p) of the BDA, 2002 “value added products” means products which may contain portions or extracts of plants and animals in unrecognizable and physically inseparable form.
• Biowaste – Waste that is generated after the exhaustive economic use of the biological resource.
• Synthetically prepared biological material includes secondary metabolites from microbes, synthetic sugars, synthetic biomaterials, nanomaterials and so on.

Why Should Apply For NBA Approval?

The following applicants should apply for NBA approval before patent application disclosing biological resources from India:

• Indian Citizen
• Non-Indian
• Non-Resident Indian (NRI)
• Entities registered or incorporated in India.
• Entities not registered or incorporated in India.

Why To Disclose Biological Resource & Apply For NBA Approval?

The National Biodiversity Authority may, while granting the approval under section 6(2) of BDA, 2002, impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilization of such rights from biological resources.

The Biological Diversity Act, 2002 has a penal provision in this regard under section 55 (1) which provides that “whoever contravenes or attempts to contravene or abets the contravention of the provisions of the section 3 or section 4 or section 6 shall be punishable with imprisonment for a term which may extend to five years, or with fine which may extend to ten lakh rupees and where the damage caused exceeds ten lakh rupees such fine may commensurate with the damage caused, or with both.”

If the complete specification does not disclose or wrongly mentions the biological material source and geographical origin, then, according to clause (j) of Sections 25(1) and 25(2) respectively of the Patents Act, 1970, it will create a ground for pre and post-grant opposition.

If NBA approval is not obtained/submitted, a controller can file an objection in the examination report. Even if one did not raise the complaint during the examination process, it could be brought subsequently.

How To Apply For NBA Approval?

For the sake of patent application, a person seeking approval from the NBA must make an application on NBA Form 3 through ABS (Access and Benefit Sharing) e-filing with INR 500 as a fee. The particulars that are required for Form 3 application is given below:

1. Full particulars of the applicant including

(a) Name of the applicant (s) as indicated in the IPR application submitted to the Patent Office.

(b) Complete address of the applicant (s) with state/province name/country and PIN code/zip code, Telephone/ Fax Number (Land line with code), Mobile Number and Email address.

(c) Complete professional profile or bio-data of the applicant (s) not exceeding one page.

(d) Bona fide letter in original from the institution or organisation with whom the applicant (s) is affiliated.

2. Details of the invention on which IPRs sought including

(a) Full and exact title and abstract of IPR on which application is made.

(b) Patent office reference number, if application is filed before the Patent Office.

3. Details of the biological resources and or/associated knowledge used in the invention including

(a) Scientific name(s) of the biological resource(s)

(b) common name(s) of the biological resource(s)

(c) Details of associated knowledge used and source of such information, if applicable.

(d) Provide copy of approval of NBA for access to biological resources and/ or associated knowledge (if the applicant is covered under Section 3(2) of BD Act)

4. Geographical location from where the biological resources used in the invention are collected

(a) Indicate the name of village, panchayat, block, taluk, district and state from where the biological resource(s) were collected.

(b) If the biological resource(s) were collected or procured from the Institute/ Organization/ Company/local trader/individual, provide exact contact details (address and phone number) of such supplier and invoice/evidence for such purchase.

(c) Indicate whether the material was sourced from wild/cultivated

5. Details of any traditional knowledge used in the invention and any identified individual/ community holding the traditional knowledge

(a) Provide full details of individual/communities holding such traditional knowledge (b) In case, this knowledge sourced from texts provide source of such information (photocopies of relevant information may be attached wherever applicable)

6. Details of Institution where Research and Development Activities carried out

(a) Name and address of the institute where research was carried out.

(b) Please provide details of collaboration with other institutions/organization/company, if any, during the course of research activities.

7. Details of economic, biotechnological, scientific or any other benefits that are intended or may accrue to the applicant due commercialization of the invention

(a) Nature of benefits envisaged

(b) Investment in Research and Development, in the current invention.

8. Declaration by the applicant(s).

9. Authorization letter from the applicant (s) to any agent or representatives.

Conclusion

Any patent applicant should be mindful while using biological resources from India for their research and innovation. It is mandatory to apply for NBA approval before any patent application in or outside India and the respective details should be disclosed in the description part of the specification.

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