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I had recently filed a RTI Application with the DIPP to collect information on the backlog of certain specific proceedings before the Patent Office and the Trademark Registry. The application was transferred to the office of the CGPDTM and the replies from his office indicate a daunting backlog which is going to be impossible to clear with the present staff, especially at the Trade Marks Registry.
Given below are the figures of some of the pendency rates, if you are interested in detailed year wise breakups, please access the entire reply (available over here):
(i) Pending pre-Grant Oppositions under Section 25(1) of the Patents Act, 1970: 835
(ii) Total number of pre-Grant Oppositions disposed in last 5 years: 144
(iii) Pending post-Grant Oppositions under Section 25(2) of the Patents Act, 1970: 156
(iv) Total number of post-Grant oppositions disposed in last 5 years: 68
(v) Pending applications under Section 69 of the Patents Act, 1970 for recording of assignments of patent: 1,127
(vi) Pending oppositions under Section 21 of the Trade Marks Act, 1999: 135,874
(vii) Pending rectification applications under Section 57(1) of the Trade Marks Act, 1999: 878
(viii)Total number of opposition and rectification petitions disposed under Section 21 & Section 57(1) in the last five years: 21,978
(ix) Pending applications under Section 40 of the Trade Marks Act, 1999 for recording of assignment of trademarks: 37,569
A. Pre-grant and Post-grant opposition before the Patent Office: It is interesting to note that the pre-grant opposition mechanism which was almost done away with by the government in the 2005 amendments, is much more popular than the post-grant opposition mechanism. Contrast these figures for the year 2010-2011: 294 pre-grant oppositions versus a mere 29 post-grant oppositions.
The current pre-grant opposition mechanism, while necessary, is also open to abuse because of weak procedural safeguards. The standard strategy is to keep filing representations through different sister companies or employees so as to delay the hearing for as long as possible. Patentees with strong patent applications are made to suffer through these delays and in worst case scenarios the grant of a patent can be delayed by years together. We had blogged about such abuses of the pre-grant opposition mechanism over here. I’m guessing that at least 5-10% of the pre-grant oppositions are bogus.
What I also find interesting in these numbers is the fact that they do not seem to be consistently increasing every year. Conventional logic would determine that as patent filings go up, even pre-grant and post-grant oppositions filed every year would go up. However that does not seem to be the case. If anything pre-grant oppositions have shown wild variations. While in 2009-10 these oppositions were at 103, they spiked to 294 in the subsequent year and then fell to 193 in the next year.
B. Rectifications and Oppositions before the Trade Marks Registry: Moving on to the Trademarks Registry, the situation appears to be serious. In fact ‘serious’ would be an understatement. If anything the situation is suicidal. Apart from the mounting number of trademark examinations, the 5 Trade Marks Registries are faced with a cumulative total of 135,874 i.e. one hundred thirty five thousand eight hundred and seventy four only! Unlike mere examination of trademark applications, oppositions take up significant resources of the trademark registry because such oppositions can be conducted only by Registrars and each hearing can take up to a few hours. Therefore while technology can ease the examination process to a considerable extent, trademark oppositions necessarily need a fixed number of man-hours. As per the latest figures with me there are only 15 Registrars. How exactly will they tackle 135,874 oppositions while also granting trademark registrations on the side.
In addition, the Trade Mark Registry also has the responsibility to hear applications under Section 57 for rectification of the trademarks register. This includes the power to cancel registered trademarks. There are around 878 applications under this section pending before the Registry. Please note that even the IPAB has the power to dispose such applications. Like the petitions under Section 21, these petitions also take up considerable man-hours since hearings have to necessarily be conducted by a Registrar.
The disposal rate of oppositions has been directly proportional to the strength of the trademarks registry. For example in the year 2009-10 when the trademarks registry was working at a mere 17% of its total strength, the number of oppositions disposed plunged to a mere 983 from 4703 for the previous year.
C. Recordal of assignments in the Register: Apart from oppositions and rectifications and of course examination, the Patents Office and the Trade Marks Registry also have important miscellaneous functions such as recording the transfer of ownership in patents and trademarks through licensing and assignment agreements.
Recording such transactions in the patents and trademarks registers is critical not only from the point of greater transparency but also from the viewpoint of business transactions. In certain cases the assignee of a trademark or patent cannot himself sue for infringement until such assignment is recorded in the register. Also trademarks are being used increasingly as collateral with banks for the purpose of raising loans and working capital and it is absolutely pivotal for such businesses to have a timely recordal of their assignment deeds in the register without which banks are apparently not prepared to grant loans.
According to the RTI Reply, the Trademark Registry has a pendency of over 37,659 applications under Section 40 of the Trade Marks Act while the Patent Office has a more manageable 1,127 applications pending before the Registry.
D. The future challenge: The main reason for these huge backlogs at the Patent Office and the Trademark Registry is the crippling lack of staff. I had blogged about these shortages over here. As per the last RTI reply from the DIPP, the Trade Marks Registry was working at a strength of a mere 40 examiners and 15 registrars against a sanctioned strength of 86 examiners and 36 registrars. Even if the Trade Marks Registry were to be functioning at its sanctioned strength, it would still be doubtful whether they would be able to tackle the backlog.
The situation at the Patent Office is slightly better given that they have recently recruited at least 248 patent examiners. However of these 248, only 185 have been officially notified on the Patent Office website. Where have the remaining 63 patent examiners gone? However, even without these 63 patent examiners, I think the patent office is much better equipped to handle the increasing pile of patent examinations and oppositions, once these examiners are trained and the existing examiners are promoted to the post of Controllers.
The biggest challenge therefore for the new CGPDTM Chaitanya Prasad will be to convince the DIPP to drastically increase the strength of the trademark registry beyond the current levels.
Apart from increasing the strength the CGPDTM must seriously think of convincing the DIPP to amend the Act to transfer post-grant oppositions of patents and rectifications of trademarks to only the IPAB which already has the power to handle both types of proceedings. It simply makes no sense to vest the same powers in two different institutions. Just transfer everything to the IPAB and upgrade the IPAB with more benches to hear such matters. The Patent Office and Trade Marks Registry should focus exclusively on the administrative process of granting patents and trademarks rather than judicial functions such as post-grant oppositions and rectification of trademarks.