Is India Ready for Short Term Patents: A Critical Study

Is India ready for short term patents: A Critical Study- Prolawctor

Short term patents are also called Utility Models in various countries. For example, in Australia, utility model protection is referred as “Innovation Patent”, in France as “Utility Certificate”, and in Belgium as “Short term Patent”.

Short-Term Patents provide protection to minor inventions. They are designed to respond to the needs of local innovators. The requirements and procedures for obtaining protection and the duration of protection vary from one country to another.

The inventions protected by short-term patents vary in various jurisdictions. In some countries, these can be applied for the same fields as patents. In other counties, short- term patents protection is eligible only for the shape or structure of products in certain fields of technology. 

The (Trade-Related Aspects of Intellectual Property Rights) TRIPS Agreement does not comment on Short-tern patents. Nevertheless, a number of countries have implemented this module to protect minor and incremental innovations. And to complement the patent system in a flexible manner.

Short term patents/ Utility models are different from a Patent in the following ways:

  • They require lower level of inventive step as compare d to that of patents.
  • The maximum term of protection provided in the law for a utility model is generally much shorter than that provided for a patent (i.e., 20 years).

Features of Short-Term patents:

  • They usually grant exclusive rights for the protection of the product and not the process.
  • Novelty is a criterion in all utility patent systems, although the standards of novelty may vary in different jurisdictions.
  • The standard of non-obviousness or technological progress/ inventive step is usually much lower than that of patents.
  • Usually, there is only a preliminary procedural examination before the grant of a short -term patent.
  • The duration of protection usually varies from 6 to 15 years, as compared to the 20-year protection of patents.

Short term patents are cheaper and easily attainable and no strict examination is conducted before granting them.[1]

In India, utility model protection is not available at present.

Short-Term Patenting system in comparison with the other countries

US Petty Patent

In US, short- term patens are called petty patens. They are granted to anyone who invents or discovers any new and useful process, machine, and article of manufacture, compositions of matter, or any new useful improvements thereof. In the case of KSR Int’l Co. v. Teleflex Inc[2], a general issue of material fact existed as to whether a person of ordinary skill in the art would have been motivated to attach an electronic control to the support structure of the Asano pedal assembly. The district court had said to apply the prevailing teaching-suggestion-motivation test wrongly and later the Supreme Court had cleared the grants of the petty patents.

JAPAN

In talking about the utility model system, Japan has made the best use of the above. They have utilized the system to their economic and technological advantage. Until World War II, the technical level in Japan was low compared to western countries but they soon realized the need of developing their own technology. The Japanese utility model system has been amended several times to suit their industrial development in order to encourage protection to local innovations and thereby promoting science and technological development in the country. Under the Japanese law, only devices are protectable. It must not be against morality or public order. The protection extends up to 6 years and dual protection is not given. The infringement is strictly refrained and if done, it will attract dual penalty under Section 61 of the Utility Model law.

Hong Kong

Once granted, a short-term patent is initially valid for four years from the date of filing. The maximum term of protection of a short-term patent is eight years (subject to renewal for the second four years before the expiry of the first four years).[3] 

A short-term patent while it is in force confers on the owner the right to prevent all third parties not having his consent from using the invention. [4]

A short-term patent also confers on the owner the right to prevent any unauthorized indirect use of the subject-matter of the short-term patent. The owner of a short-term patent (i.e. the owner or the exclusive licensee) can bring civil proceedings against infringements committed after the grant of the short-term patent. 

In order to enforce the rights conferred by the short-term patent, the owner shall first establish the validity of the short-term patent as the grant itself is not a conclusive evidence that the short-term patent is patent-able which the party being sued usually challenges. If the owner failed to prove the validity or the party being sued proved that the short-term patent is invalid, the short-term patent will be revoked and the infringement claim will be dismissed by the court.[5]

Advantages and Need for Short- Term Patent protection in India

  • India is a rapidly growing developing nation and according to the economic survey of 2014-15, has emerged as the world’s fourth largest Start up hub. With the help of Short-term patent protection, they need not follow the stringent patentability criteria under the patents act. They can opt for Short- term patents to counter the rise in competition with copied ideas, market losses etc.
  • This system provides provide incentives for inventors to innovate by offering them an exclusive right for their creativity and the possibility of material reward for their inventions.
  • For obtaining a short-term patent, the applicant is required to disclose the invention to the public by providing detailed, accurate and complete written description of the invention in the application.
  • Shorter period of protection and easier and cheaper procedures to obtain and maintain protection, are often considered favorable for supporting local or minor innovations by small companies.
  • The Small and Medium Enterprises (SMEs) and (MSMEs) acquire a prominent position in our country. SMEs and MSMEs contribute nearly 8 percent of the country’s GDP, 45 percent of the manufacturing output and 40 percent of the exports. They provide the largest share of employment after agriculture. These enterprises are the breeding ground for entrepreneurship and innovation. They usually suffer from shortage of funds for conducting tests and trials and paying hefty patent fees. Short- term patents can be the most appropriate IP right for them.

For Example,

The bamboo splint making machine developed by two persons from Mizoram has revolutionized the traditional bamboo industry in North- Eastern States. Similarly, other grass-root innovations have a lot of potential to change the lives a lot of people, however, under the present legal regime no protection can be granted to such grass-root innovations. Short term patents can be of great advantage to such innovations.

Similarly, in the pharma industry, protection to small improvements of drugs is a difficult to get, therefore, introduction of Short-term patenting system is very significant for such innovations.

  • Short-term patent protection is most suitable when an invention is expected to be outdated in the market quickly because it can be obtained quickly with lower costs.
  • The registration process is simpler and the requirements are often less stringent
  • They are cheaper to obtain and maintain the rights since there is no substantive examination.

Criticisms and Disadvantages of Short- term Patent Protection

  • Due to the lack of substantive examination, there is less legal security with respect to the validity of the registered utility models, which might be successfully challenged and revoked later. Consequently, third parties may be skeptical about the value of utility models, and be more cautious in concluding a licensing or funding agreement.
  • In case of short-term patents, the lifespan usually differs between 6-12 years and if a product embodying the invention has a long-life cycle, the invention is expected to be relevant in the market for a long period. Short- term patent protection may not be a favorable option.
  • The lack of formal examination, inventiveness standard and many other factors might lead to extensive litigation. This means employment of patent attorneys which is again an expensive process.

There are problems with the existing patent system like:[6]

Lack of transparency on the patent examination. It is usually considered a cozy affair between the patent office and the applicant. He might amend it unlimited times and the third-party observer, who may be interested in the pending patent has no clue about the exchange between them.

There is also a lack of patent awareness among the judiciary. Unlike the advanced litigation of USA, Japan, the awareness is vague in India. The suit first moves to the District court and then the High Court. There are also a lot of pending cases.

Suggestions

  • The patent quality in India has to be improved. The system needs strengthening. The speeding up of the time taken to grant a patent can reduce the need of short- patenting system in India.
  • The process of searching patents must be quicker and easier. The patent officers must work diligently and must have better lines of communication with the patent office. The Short- term patent system might add up to the already existing unexamined patents and might mess up the system further. There are approximately 40,000 unexamined patent applications in the country.[7]
  • The short-term patent model need not be an alternative to the already existing one. It can be used as a complement. They can be quickly obtained while waiting for the grant of a patent. Some counties convert a utility model to a patent, and vice versa. These flexibilities can be also used in support of business strategies.

The following points can be considered while formulating the short-term patent laws in India:

  • There should be relaxations in the concept of “inventiveness” and a quicker and less complex registration process.
  • The novelty should be an essential criterion and should be applied to judge if an incremental invention is worthy of protection under utility model.
  • A grace period of 6-12 months should be provided to the innovators for protecting their innovation from the unauthorized disclosure of their invention.
  • The protection period must be less than that of patents.
  • Preliminary examination of the invention should be enough.
  • A separate legislation with respect to utility model protection would be required.

Conclusion

Innovations are growing rapidly but in terms of filling them, India is lagging behind. While the idea of having a Short-term patenting, system sounds very promising and beneficial to the Start-ups and SMEs, there is still a long way to go. If India opts this comprehensive model, then it will be able to fill the gap between the patentable and non-patentable inventions.

This new model may serve as a remedy for the shortcomings of the Indian patenting system, provided that they are enforced within a legal structure conducive to our domestic economy and industry. The utility model, if and when implemented, should facilitate the flow of innovation and creativity in the nation to take the country to a higher level in terms of innovation and economy. After an extensive research, I have found that now is not the right time to make an addition to the Indian IPR laws.

A lot of developments in the field are required. In a span of 5 years, when the patent act is properly established and the loopholes are filled, we can welcome the Short-term patent system. For a country like India which has already been criticized for its IPR regime (the Novartis case[8] and India already being on the US priority list for digital content piracy), it would be advantageous to have an examination system with proper examination guidelines in place for grant and enforcement of Short-term patents along with remedies and sanctions available in cases of infringement.

Pratyusha Ganesh


References

  1. India: Need for Utility Patents in India by Purvasha Mansharamani 28 June 2016 TMT Law Practice
  2. Aayush Sharma, Intellectual Property & Small and Medium Enterprises, available at http://www.mondaq.com/india/x/209194/Trademark/Intellectual+Property+and+Small+and+MediumSized+Enterprises
  3. Neeraj Parnami, Commercialization of Intellectual Property (IP) for Small and Medium Enterprises (SMEs) in India
  4. The utility of the Utility Model in India by Abhishek kumar DEC 07, 2019

[1] N. Ayse Odman Boztosun, Exploring the Utility of Utility Models for Fostering Innovation, 15 J. INTELLEC. PROP. RIGHTS 429, 429 (2010).

[2] 550 U.S. 398 (2007)

[3] Section 126 of the Patents Ordinance (Cap.514)

[4]Section 74 of the Patents Ordinance (Cap.514) 

[5] http://www.onc.hk/en_US/enforcement-of-short-term-patent-rights

[6] PATENTING IN INDIA By Dr.Sheetal Thakur (2015)

[7] PATENTING IN INDIA By Dr.Sheetal Thakur (2015)

[8] Civil Appeal No. 2706-2716 of 2013

One thought on “Is India Ready for Short Term Patents: A Critical Study

Leave a Reply

error: Content is protected !!
%d bloggers like this: