Indian Patent Office published Draft Examination Guidelines

The Indian Patent Office has published a Draft Manual of Patent Practice & Procedure. The deadline to send comments on the Draft Manual to the Controller of Patents is June 20, 2005. The Manual runs into 166 pages and it contains 14 chapters and 3 Annexures. In his Opening Remarks the Controller of Patents mentions that the principal objective of the Manual is to establish ‘uniformity’ and ‘homogeneity’ in the processing of patent applications in India. This is an indirect admission of the well-known fact that there has not been uniformity and consistency in the Indian patent prosecution system, particularly the examination system. More particularly, there has been considerable amount of subjectivity in dealing with the structure and functions of claims, the most critical aspect of the patents prosecution system.

The Manual is a great step forward aiming at augmenting the standards of patent prosecution in India. The absence of judicial precedents articulating key aspects of patents law and practice has been a major impediment in the efforts to develop a well codified Manual of Patent Practice and Procedure. The draft Manual attempts to overcome this by relying on judicial pronouncements in other jurisdictions. While the case law from outside India cannot have precedential effect, it can definitely have persuasive effect in the patent examination process.

A number of critical issues have been addressed in the Manual, if not resolved. It provides a detailed explanation on the patentability criteria. It is pertinent to note that the recent amendment to the Indian Patent Act re-defined key concepts like ‘inventive step’. The new definitions deviated from the established principles of patents law and practice. The Manual attempts to perform a ‘damage control’ exercise by clarifying the provisions in light of the established principles.

The Draft Manual, however, requires substantial improvements so that it addresses a number of anomalies in the existing practices. But it is definitely a great step forward.

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