Clearer patent law provisions required to benefit from WTO regime: Experts

Jayashree Padmini - New Delhi

India needs to balance competition with patent law and policy, raise patent application fee, redefine the scope of patentability and further specify non-patentable items and criteria for innovation as well as novelty in order to benefit from the WTO regime, experts say quoting the recent US Federal Trade Commission (FTC) report which suggested a new administrative procedure for that country and alerted of possible legal problems in developing countries.

They feel the FTC report which calls for modifying patent systems in such a way to maintain a proper balance between competition and patent law and policy is very relevant since economic benefit of a strong IPR regime is for those who generate IPR consistently.

While we are putting in place a patent law in line with the developed world and developing a patent infrastructure to match it, the beneficiaries would be global companies till the time Indian companies start generating IPR at par.

India needs to hike patent application fee in accordance with the US, which is about 10 times higher, in order to justify handling the load which is expected to go up.

Redefining the scope of patentability, specifying non-patentable items and the criteria for innovation and novelty would help in weeding out unwarranted patent applications and reduce the burden on patent offices, they said.

The report points out that questionable patents are a significant competitive concern and can harm innovation. They would block competition and monopolise the market deterring or raising the cost of innovation. In developing countries with innovation oriented industry, this could increase defensive patenting and lead to licensing complications, says the report.

The report suggests legislative changes to create a new administrative procedure to allow post-grant review so that patent challengers are able to raise issues of novelty, non-obviousness, written description, enablement and utility.

The option under the existing regime in the US - litigation - is very costly and lengthy. And it is not an option unless the patent owner has threatened the potential challenger with patent infringement litigation. The FTC recommends legislation to specify that challenges to the validity of a patent are to be determined based on a preponderance of the evidence and to place the burden on the patent-holder to prove the claimed invention resulted in commercial success.

FTC further said that along with other possible costs and benefits, possible harm to competition should be considered before extending the scope of patentable subject matter. Because, in the past, the scope of patentability was widely expanded to include things like living organisms.

Further, it called for making it mandatory, the publication of all patent applications 18 months after filing to avoid investment in duplication and thus, patent infringement by others in the field.

It also calls for preventing use of all procedures to extend the patent period. FTC suggests creation of intervening or prior user rights to protect parties from infringement allegations that rely on certain patent claims first introduced in a continuing or other similar application. Legislation amendments are needed to enforce penalty for wilful infringement.

The 315-page report summarises the results of extensive hearings by the FTC and the Department of Justice during 2002. The hearings involved more than 300 panellists including business representatives, the independent inventor community, leading patent and antitrust organisations and experts.