Report on the action taken by the government of India on the IP Rights Regime

Spread the word

The Department related Parliament Standing Committee on Commerce headed by Shri V Vijayasai Reddy, submitted its 169th Report on Action Taken by Government on the Recommendations/ Observations of the Committee contained in its 161st Report on ‘Review of the Intellectual Property Rights Regime in India’ (hereinafter referred to as “the report”). The recommendations/observations cover topics such as amendments and strengthening of existing IP legislations, Artificial Intelligence and IPR, IP Financing, and Compulsory Licensing under the Patent Act, 1970. The Report has been divided into 4 chapters, namely:

I.               Recommendations/Observations which have been accepted by the Government;

II.             Recommendations/Observations which the Committee does not desire to pursue in view of the Government’s replies;

III.           Recommendations/Observations in respect of which replies of the Government have not been accepted by the Committee; and

IV.           Recommendations/Observations in respect of which Final Replies of the Government are still awaited.

The abovementioned chapters are discussed in brief below:

I.              Recommendations accepted by the Government:

Noting the significance of IPRs in increasing Foreign Direct Investment of countries, the Committee recommended the Department undertake a complete study of the resultant benefits of improvement in IPRs on the economy, specifically in terms of increase in GDP, employment generation, augmenting forex reserves, and boosting exports. In relation to the same, the Controller General of Patents, Designs & Trade Marks (CGPDTM) has been regularly taking steps to strengthen IPR filing in the country which will increase FDI inflow in the country and boost the economy.

The Committee had also recommended the introduction of a new label- ‘patent pending’- on products in order to acknowledge the credibility and authenticity of products, which plays a significant role in regard to patentees. This labelling would also empower patentees to protect their products from IP crimes. For this purpose, action has been taken through consultation with Stakeholders, for the inclusion of the said recommendation in the Patent Amendments Bill.

The lack of awareness about IPRs among Indians, and the low number of patent applications filed in India by Indians was yet another major observation made by the Committee. In this regard, the Department has stated that it has been putting in conscious and organized efforts to raise IPR awareness in the country for the growth of the industrial proletariat. The Cell for IPR Promotion and Management (CIPAM) established as a professional body, under the aegis of DPIIT, is also noted to have been working extensively towards creating IP awareness. Other measures taken include IPR training held for MSME Officers by the Department in collaboration with the Ministry of Micro, Small and Medium Enterprises; several extensive outreach programmes in rural areas for guiding artisans, craftsmen and traditional rural innovators and creators; the TRADE SECRET TOOLKIT put together by CIPAM in collaboration with Global Trade Secrets Council and Centre for Responsible Enterprise and Trade to guide Indian businesses, especially MSMEs and Start-ups in the protection of their trade secrets; and various school and college level awareness programmes.

In regards to counterfeiting and piracy, the Committee had acknowledged that the same are rising threats to IPRs, and recommends the Department to stress upon capacity building of enforcement agencies on IP laws including strengthening of IPR cells in State police forces. Ground implementation of stringent IP legislations with a stronger Inter-Departmental collaboration on IP crimes and the establishment of 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 were also recommended by the Committee. To address the above issues, DPIIT through CIPAM has been taking initiatives in the form of Anti-Piracy and Anti-Counterfeiting campaigns to raise awareness about such malpractices. Additionally, the Department in association with FICCI has also prepared an n IPR Enforcement Toolkit for Police, to help them deal IP crimes. The Customs is also set to receive a similar toolkit shortly.

The Committee also observed and encouraged the Department to explore opportunities related to Patent Prosecution Highway (PPH) amongst nations as a mutual initiative which aids in creating a beneficial environment for promoting and accelerating patent filing. The Action taken with respect to the same includes the Pilot PPH program entered into by the Office of CGPDTM with the Japan Patent Office for a period of 3 years in some specified technical fields. A PPH proposal has also been received from Denmark and a working group for the same has also been formed.

Certain recommendations were also made by the Committee with respect to the Patent Act, 1970. The first recommendation was that Section 3(b) of the Act should be amended so that a provision of a safeguard mechanism is included against the arbitrary exercise of power by the Controller in declining patents. Secondly, the Committee recommended the Department to explore the feasibility of granting patents to non-living substances occurring in nature under the act and its subsequent impact on public interest. It also recommended the Department to examine the stringency of Section 122(2) and make essential amendments to amend the specified provision of imprisonment of six months in case of furnishing false information. The report states that Stakeholders’ consultation has been done on the said recommendations for inclusion in the drafting of Patent Amendments Bill.

In regards to the Trademarks Act, the committee recommends the Department to limit the time period of filing trademark opposition from 4 months to 2 months. This recommendation has also been forwarded to the Stakeholders for consultation.

An e-TMR project is under development in pursuance to the recommendation that Department needs to take steps in modernization of trademark offices by undertaking digitalization of work. A proposal to include a platform in e-TMR system, wherein the Police officers may file online request under Section 115 and concerned officer will provide its opinion within 24 hours, is being examined in consultation with CGPDTM. The latter action has been taken in pursuance to the Committee’s recommendation that the cumbersome procedures related to search and seizure operations in trademark infringements under Section 115 of the Act should be streamlined and simplified for improving and accelerating investigations.

As regards to the Copyright Act, Department has been making concerted efforts to resolve the conflict arising between copyright holders and educational institutions due to the exceptions provided in Section 52(1) which aims at ensuring access to literary works for educational purposes. The Committee had recommended the Department to facilitate a fair and equitable ecosystem of literary culture in India by introducing necessary changes in Section 51(1) of the Act such as permitting reprographic works in Government owned educational institutions and storing it in libraries for their easy access to students as well as stipulating limitations to unrestricted commercial grants to copy books and literary works and storage of copied works in digital formats. Inter-ministerial consultations are also being held to note the Committee’s recommendation to the Government to promote establishing of community libraries and upgradation of libraries in the country for easy access to foreign literary works that are exorbitantly priced and difficult for students to access. The Department is also consulting stakeholders for the implementation of a mechanism whereby registration to a copyright society is granted for a fixed term and is renewed upon compliance of certain pre-requisites as prescribed under the Act and the Rules. This is based on the Committee’s recommendation to increase the renewal time of Copyright Societies from 5 to 10 years.

The Committee also recommended the amendment of Section 31D for incorporating ‘internet or digital broadcasters’ under statutory license taking into consideration the rise in digital or OTT platforms and its significant contribution to the economy. The issue as to whether online streaming services are eligible for being granted statutory licenses for broadcasting under Section 31D of the Copyright Act was brought before the Bombay High Court, and the court opined that internet as a medium is not included within the scope of statutory licensing. Presently, the matter is subjudice before the division bench of the Bombay High Court, who had granted a stay on the effect of the judgment passed by the single bench. The Department, on the other hand, is consulting stakeholders on the same for implementation of the recommendation.

A strict enforcement mechanism through a centralized agency authorized to ensure compliance of GI tagged products to the stipulated standards under GI Act while they are being marketed and commercialised, is one of the recommendations put forward by the Committee in relation to Geographical Indications. The report states that the CGPDTM and GI Registry have been sensitized regarding this recommendation. The Committee also notes that the registration of traditional knowledge as Geographical Indication if it displays linkages to a geographical location would be highly advantageous to combine traditional knowledge into IPRs; and that India should engage at international level for the protection of Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources to prevent the other countries from exploiting them. Two rounds of consultations have been done with CSIR-TKDL with regards the same.

The Department is consulting stakeholders for implementation of a separate statute or framework for the protection of trade secret in India, as recommended by the Committee. This recommendation has been made in the light of the increase in frauds and misappropriation in the digital world.

The committee had observed that only a few out of the numerous patent applications related to pharmaceuticals have been granted in the last 5 years, and that necessary steps to expedite the process of granting of patents should be taken. The Department states that numerous initiatives like amendments in rules, modernization of Patent Office, manpower augmentation, use of IT enabled processes and expedited examination, and the like have been undertaken for quicker and accelerated examination and grant of patents applications. However, it was also noted that as far as pharmaceuticals are concerned, the patent applications will have to pass the scrutiny of the patent law, and that it cannot be determined that despite large number of patent applications being filed, less patents are granted solely due to delay in examination and grant. In addition to this, the Department of Pharmaceuticals is in the process of formulation of Research & Development Policy. Ministry of AYUSH is also part of drug discovery Mission and contributions from Ministry of AYUSH will also be taken in R&D Policy being framed by the Department.

The Committee also expressed its concern on the increase in spurious and adulterated drugs in India, and recommended the Government to bring in a mechanism at the earliest for the detection of authenticity of medicines and medical devices from manufacturers to end users in supply chain. As per the recommendations of an Inter-Departmental Committee (IDC) constituted by the Ministry of Health and Family Welfare, a practical way to roll out a track and trace mechanism, in phase-wise manner is being considered by CDSCO/Ministry of Health and Family Welfare.

Yet another recommendation that was put forward by the Committee was that the Government should put in all efforts to create awareness amongst farmers and farming communities in order to let them voluntarily accept IPRs in protecting their rights. In pursuance to the same, it has been stated that the Department of Agriculture has informed that acculturation of farmers on IPR related to plant variety protection in India is being done by inculcating the provisions available in the Protection of Plant Variety & Famers Right Act, 2001 successfully. While considering the recommendation of the Committee that more governmental efforts through legislation and implementation of law may be made in favour of farmers, it has been observed that the PPV and FR Acts protects the rights of the farmers adequately. Moreover, it was also noted that the PPV&FR Authority has organized more than 1800 awareness programmes among farmers and farming communities in India.

II.            Recommendations and Observations that the committee does not desire to pursue:

Even though numerous recommendations made by the Committee were accepted by the Government, the Committee desires not to pursue some of them in view of the Government’s replies. In this regard, several recommendations like creation of further categories of classification for trademarks was not considered as the government was of the opinion that the existing NICE classification would suffice. 

In pursuance to the recommendation of the Committee that a fair and equitable growth of IPRs in India needs improvisation and streamlining of legislative, administrative, adjudicative and enforcement mechanisms, it was stated that the Department reviews policy issues on a regular basis.

III.          Recommendations and Observations in respect of which the Replies of the Government have not been accepted by the Committee:

In pursuance of the Committee’s suggestion that the Department should review the existing framework of the Patents Act and Copyright Act to incorporate the emerging technologies of AI and AI related inventions, the Department notes that although that there is no provision regrading protection of AI generated works, it recognises that AI is not a natural person and cannot be treated as an author. This view has not been accepted by the Committee, thus leading it to provide further recommendation to the Department to enact suitable legislations or modifying the existing laws on IPR in order to accommodate AI based inventions.

The Committee had also recommended the Government to undertake Judicial Impact Assessments along with wide consultations with relevant stakeholders to ensure building a systemic perspective on abolishing an established system in the country. However, the Department replied that with the passage of the Tribunals Reforms Act of 2021, the IPAB stands dissolved. However, the Committee stands with the opinion that the dissolution of IPAB would overburden the High Courts and Commercial Courts. Therefore, it opines that the Government should take suitable measures to encourage setting up of IP Division with dedicated IP benches in High Courts for providing alternative solution to resolve IPR cases, similar to the one in Delhi High Court.

The Committee has also expressed its disappointment in the unsatisfactory reply furnished by the Department wherein no appropriate response on promoting IP financing has been given. The Committee proceeds to strongly recommend the Department to undertake efforts in training the worth and advantages of IP financing and intangible IP assets amongst the financial institutions, business and trading communities in the country.

The Committee in its report, has recommended the government to resort to compulsory or voluntary licensing in situations when the dangerous variants of Covid-19 virus pose severe threat to lives and resolve limitations on the supply side.

IV.          Recommendations and Observations in respect of which final replies of the Government are still awaited:

The report also provides the recommendations of the committee, the replies to which are still awaited. This includes the establishment of IPR Facilitation Centres.

 It can be stated that the Department has noted the necessary steps or actions to be taken in regard to the IPR regime in the country. The committee has put in considerable effort to bring about a substantial change in the light of the advancement of the society. The further recommendations that the Committee has provided in the report against certain observations made by the Department showcases the strong opinions that the former holds in relation to the improvement of IPR framework in India.

Spread the word

Leave a Comment

Your email address will not be published. Required fields are marked *