JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/

August 7,017
Shri Rajiv Aggarwal
Joint Secretary
Ministry of Commerce & Industry
Department of Industrial Policy & Promotion
Udyog bhawan, New Delhi
India
Dear Shri Rajiv Aggarwal,
Re: Proposals for further improvements in Indian patent system (Expedited
examination, PPH, and others)
It was a great pleasure for us, the Japan Intellectual Property Association'srepresentative delegation, to have a meeting with your office's and DIPP's
members on February 6th 2017 at your Delhi office. The meeting was very fruitfuland useful. After returning to Japan, we have confirmed the acceleration in theexamination of trademark applications filed by JIPA members. We would like toexpress our sincere appreciation on your efforts in expediting the trademark
examination.
In the meantime, we have reconsidered a few of our requests and proposals as
the attached document. We think these amendments bring benefits to not only
Japanese companies but also to Indian companies and society.
Your kind consideration of these issues would be sincerely appreciated.
Yours very truly,(Tomonori BEKKU)Vice President
Japan Intellectual Property Association
Enclosure: Proposals for further improvements in Indian patent system
C.C.: Shri. O P Gupta, IAS, CGPDTM

Proposals for further improvements in Indian patent system
Japan Intellectual Property Association
1. Introduction of expedited examination easy for Japanese companies touse<Relevant provisions>
Article24C of the Patent Rules<Proposal & Request>
We would like to request the relaxation of the requirements of expedited
examination so that the system can be used by such applicants who are in needof an immediate protection of their invention.
<Reasons>
According to our review of the "grounds for expedited examination (see*1)," the expedited examination newly introduced is found to be not available tomost Japanese companies.
First, for the "grounds for expedited examination" prescribed in The
Patents(Amendment), Rules, 2016, Japanese companies like JIPA members,
who occupy the majority of the applicants of patent in Japan, have no choice
except for requirement (a). Furthermore, as Japanese companies file a PCT
application in Japanese with the JPO as a receiving office according to thefirst-to-file system, they can only select either JPO or EPO as an International
Searching Authority or an International Preliminary Examining Authority. Then,in principle, even requirement (a) is not satisfied, and thus it is impossible formany Japanese companies to use the newly introduced expedited examination.
*1 Grounds for expedited examination
The Patents(Amendment), Rules, 2016(a) that India has been indicated as the competent International
Searching Authority or elected as an International Preliminary
Examining Authority in the corresponding international application; or(b) that the applicant is a startup.
In view of the above, we would like to expand opportunities to, for example,applications relating to(i) Green technology(ii) Information technology(iii) Technology used by a third party(iv) Technology used in India(v) Application which has patent family
Especially with regard to the technologies of above (i) and (ii), Japanesecompanies have a wide variety of technologies and a large number ofachievements thereof in Japan. An expedited examination system which iseasily available to Japanese companies would be an incentive for them to filepatent applications in India, leading to a better motivation for investment in India.
And we think that these amendments bring benefits to not only Japanesecompanies but also to Indian companies and society.
We would appreciate it very much if you would consider relaxing therequirements of expedited examination so that Japanese companies can use thesystem.
12. Introduction of the PPH<Relevant provisions>
None<Proposal & Request
We would respectfully like to request the introduction of the Patent
Prosecution Highway (PPH).
<Reasons>
The PPH including the pilot program has been introduced into 35 countries.
The PPH is becoming global standards these days.
The PPH speeds up the examination process for corresponding
applications filed in participating countries by allowing examiners to reusesearch and examination results. The PPH is a framework in which an application
whose claims have been determined to be patentable in the Office of First Filing(OFF) is eligible to go through an accelerated examination in the Office ofSecond Filing (OSF) with a simple procedure upon an applicant's request. Thisframework has further developed into the MOTTAINAI-PPH.
As described above, since the introduction of the PPH would greatly
reduce the burden of and accelerates the process of search/examination in theIndian patent office, we would respectfully like to request the DIPP to adopt thePPH.
3. Abolishing obligation to submit statement on working of patents, toprotect trade secrets<Relevant provisions>
Article 146(2) and (3) of the Patents Act, Article 131(1) and (2) of the Patents
Rules<Proposal & Request>
We would like to request the reduction of the burden of submitting astatement on the working of patents by patentees and licensees, and also theprotection of trade secrets described in the statement.
<Reasons>
It is an excessive burden to patentees who own many patents or licensees
to investigate the condition of working of patents to prepare informationnecessary for the submission of a statement on the working thereof, and to pay
the fees for entrusting the submission to agents every year. It may cause themto refrain from filing applications in India. If foreign companies, in particular,
who intend to protect results of their technical development in India by patents,
are forced to bear an excessive burden to maintain the patents, they may refrain
not only from filing applications in India but also from investing in India, such as
establishing research and development bases.
Thus, we would like to request the reduction of the burden of submitting astatement on the working of patents, or the abolition of the system of submitting
such a statement itself.
To reduce the burden to applicants, we have a few proposals such as toallow applicants themselves to submit statements on the working of patents,
allow applicants to browse their own states/applications on the web, and if you
modify how to answer statements, allow applicants enough time to know it in2advance.
The CGPDTM of India discloses, on its website, the PDF files ofstatements on the working of patents submitted by applicants under Section
146(3) of the Patents Act. Most of the descriptions in the statement arecompanies' trade secrets, such as sales quantity and price. For patentees andlicensees, disclosure of such information to their competitors may cause loss of
their competitiveness in their future businesses.
Therefore, we would like to request that descriptions including trade
secrets, such as sales quantity and price, should be removed from statementson the working of patents, or these descriptions are kept undisclosed in thestatements, or to allow the descriptions to be undisclosed upon appeal as withthe license registration system. Alternatively, we would like you to abolish thesystem of submitting statements on the working of patents itself as describedabove.
4. Obligation to submit information on foreign applications<Relevant provisions>
Article 8 of the Patents Act, Article 12 of the Patents Rules< Proposal & Request>(1)
Regarding the obligation to submit information required under Article 8 of
the Patents Act, we would respectfully like to request that the relevant provisions
are revised into ones that do not impose an excessive burden on applicants.
Furthermore,(2)
We also would like to request establishing certain standards which show
the conditions under which a patent is revoked.
<Reasons>(1) Reducing obligation to submit information
We understand that Article 8 of the Patents Act provides that any
applicant who has filed an application in any country outside India shall disclose
information on the detailed particulars of the foreign application within six months
from the application filing date or within six months from the date on which theController orders the disclosure of such information. We also understand that
this system can improve the quality of examination and reduce burdens ofexaminers by taking into consideration the detailed particulars of the applications
filed in other countries.
However, failure to submit information in accordance with the provision
is subject to a severe punishment, such as being grounds for opposition (Article25 of the Patents Act) or grounds for revocation of the patent (Article 64 of thePatents Act). Thus, management for preventing omissions in the submission ofinformation is a heavy burden to applicants.
Moreover, a request for information disclosure under Article 8(2) isordinarily stated in an office action. In the request, the applicant is generallyrequired to submit an English translation of a search and/or examination reportprovided by the applicant if the report is written in a language other than English.
In case of Japanese applications, under the present situation, applicants cannot
obtain English translations of necessary information through the Advanced
Industrial Property Network (AIPN) although the Indian Patent Office can obtainsuch English translations through the AIPN. The cost of translating the3necessary information imposes a heavy burden on Japanese companies who
file applications in Japanese in many cases compared to European and U.S.
companies.
Upon our visit to the Delhi Patent Office in February 2017, we received
your comment saying, "we are improving Indian Patent Office' database so as toenable Indian examiners to refer to WIPO's data. We think that the burden ofinformation disclosure on applicants will be reduced when the new DB fullyworks.” At USPTO and EPO, the details of applications are open to the public.
Also, as mentioned above, the details of Japanese applications translated in
English are provided by JPO to the Indian Patent Office through the AIPN.
(http://www.jpo.go.jp/torikumi_e/kokusai_e/establishment_aipn.htm)
Now, how is the Indian Patent Office DB improvement progressing? We
would appreciate it very much if you would let us know any concrete measures
to reduce burdens such as no need for applicants to submit information available
from the database of WIPO or patent offices of other countries.
Furthermore, we would appreciate it if you could introduce a rule, like theIDS in the US, allowing us to submit information after the due date, even if we failto submit the information on or before the due date.
(2) Provisions relevant to revocation of patent
It's difficult to judge "the same or substantially the same invention" fromapplicant side. On the other hand, as mentioned above, a violation of the article
8 could be the grounds of opposition to the grant of patent (Article 25 of thePatents Act) and the grounds of revocation of patent (Article 64 of the Patents
Act). Those situations impose heavy burden to applicants in submitting
information or risk of revocation of patents. Therefore, we would like to request
to introduce a rule for making it clear that "the same or substantially the same
invention" in the Article 8 of the Patents Act means “applications that areassociated with the same priority”.
Meanwhile, in the decision given in 2014 (Sukesh Behl & Anr. v.
Koninklijke Phillips Electronics, Delhi High Court, No. 1), it is confirmed that thepatent will not be revoked automatically in case of failure to submit information inaccordance with the provision of Article 8 of the Patents Act, but be revoked incase that the court considers the failure as being intentional and being not able
to be overlooked. According to the above decision, the court will judge whether
the patent should be revoked or not by the reason of the failure to comply withthe provision (Article 64 of the Patents Act) on the basis of the submitted
evidences. It is quite natural that the court will do so. However, as the judgementof revocation of patent makes a serious effect to the applicant, we think all
matters should not be left to the discretion of the court and it is desirable toestablish certain standards like a guideline which shows the conditions or
circumstances where a patent has a risk of being revoked. We believe that theestablishment of such standards meets the National IPR Policy published in2015, and improving stability of India patents will promote a number of patentapplications in India.

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