Om Desai

The United States Patent and Trademark Office (USPTO) publishes a large number of notices in addition to guidelines for patent applicants. These guidelines are frequently updated, and it is critical to stay informed of those updates. On July 1, 2021, the USPTO published a notice in the Federal Register titled “Properly Presenting Prophetic and Working Examples in a Patent Publication.” In this notice, the USPTO defined prophetic and working examples, distinguished these concepts, and described their use and importance within patent applications. In contrast, this distinction is not made under Indian or Chinese law or practice. Furthermore, applicants are generally not required to provide prophetic or working examples, and the concept of prophetic examples is not recognized under Indian or Chinese patent law.

On September 21, 2021, India’s Department for Promotion of Industry and Internal Trade (DPIIT) under India’s Ministry of Commerce and Industry published amended Patents Rules, 2021, to amend the 2003 Patents Rules. The amendment now includes a new category, “eligible educational institutions,” which qualifies for the same reduced fees as natural persons, startups, and small entities. This means any “eligible educational institution” will pay 80% reduced fees for the entire patent filing and prosecution, thereby hopefully incentivizing those institutions to apply for more patents, and bringing India a step closer to becoming a global player in patent filings.

Despite India’s progress in many areas, from science to literature to technology, protection for intellectual property rights (IPR) is a topic that has come under scrutiny. The IP laws in India have remained vastly unchanged and unreviewed over the past few decades. Recently, however, the Parliamentary Standing Committee on Commerce (PSCC) decided to review IPRs in India. The Committee, led by Chairman Shri V. Vijayasai Reddy, was made up of 11 members of the Rajya Sabha (upper house) and 21 members from the Lok Sabha (lower house). On July 23, 2021, the PSCC presented a report to the Rajya Sabha titled Review of the Intellectual Property Rights Regime in India (the Report). In the Report, the Committee pointed out the “challenges in strengthening the country’s IPR regime, the related procedural and substantive constraints, legal aspects and other issues, such as low awareness of IPR, counterfeiting and piracy, IP financing, and IPRs in agriculture and pharmaceutical sector, etc.”