United States Patent Office

“ What has been said indicates sufficiently the favor extended by the patent laws of the United States to the foreign inventor. Be he the inventor, or in good faith believing himself to be so, he comes to the Patent Office in every respect on the same footing as a citizen. He is not required to first obtain protection at home, and no special fees or exactions are imposed on him. Like the citizen, he may work his patented invention or not, as he pleases, since the only obligation he incurs is that of giving it to the public at the expiration of its term. ”

“ The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. ”

“ Some individuals and organizations that are not registered advertise their services in the fields of patent searching and invention marketing and development. Such individuals and organizations cannot represent inventors before the Patent and Trademark Office. They are not subject to Patent and Trademark Office discipline, and the Office cannot assist inventors in dealing with them. ”

“ The Patent Office has not been consistent in its views in regard to the division of inventions. At times convenience of administration has seemed to be of greatest concern; at other times more anxiety has been shown for the rights of inventors. The policy of the office has been denominated that of 'battledore and shuttlecock,' and rule 41 as it now exists was enacted to give simplicity and uniformity to the practice of the office. Its enactment was attempted to be justified by the assumption that the patent laws gave to the office a discretion to permit or deny a joinder of inventions. ”

“ The United States welcomes recent statements from India's Controller-General of Patents regarding plans to hire 500 patent examiners in the next five years, as well as a Delhi High Court decision ordering a committee of senior officials to develop a plan of action to address the backlog and ensure that future applications are processed within the statutory deadline. The United States encourages greater technical collaboration between patent authorities in both countries that would facilitate the more timely examination of patent applications. ”

“ Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. ”

“ For example, a patent system should encourage the development of inventions that meet the well-established international criteria of being new, involving an inventive step, and being capable of industrial application, including as provided for in the TRIPS Agreement. Under India's Patents Act, a patent is available for an "invention," defined in Section 2 (j) of the Act as a product or process that is novel, has an inventive step, and is capable of industrial application. ”

“ The Office has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one. ”

“ First, the United States supports patent systems that incorporate efficient patent procedures and foster high-quality patents, and, in that connection, urges India to improve and streamline its patent opposition procedures. Specifically, under India's patent regime, the same interested person may, at minimal cost, challenge a patent through both pre-grant and post-grant opposition proceedings on any of eleven enumerated grounds, including by citing the same grounds in both pre- and post-grant challenges. ”

“ The United States commends India on actions taken in recent years to improve the operations of its Patent Office, including digitizing records, upgrading online search and e-filing capabilities, and hiring additional patent examiners. The United States urges India to continue its recent efforts to address its patent application backlog. ”

“ Restrictions If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner. ”

“ Technology, however, has advanced—and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office. ”

“ Reexamination.—Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. ”

“ The law requires every patent for improvement to show so much of the old as is necessary to explain the uses of the improvement. In practice much more than that is disclosed. Questions as to the proper placing of patents and cross-references would be diminished by the strict enforcement of Rule 36 of the Rules of Practice requiring that the description and the drawings, as well as the claims, be confined to the specific improvement and such parts as necessarily coöperate with it. ”

“ The United States understands that, per the recommendation under the First Draft of India's National IPR Policy, India will continue to focus on patent administration issues that aim to increase human resource development, training, use of technology, and address other capacity issues. India's demonstrated commitment to address these issues will help promote efficiency, transparency, and predictability in patent administration in India, to the benefit of domestic and foreign innovators, and to India overall. ”

“ The enormous extent, diversity, and refinement of the useful arts preclude the formation of a judgment on novelty within a reasonable time, unless the necessary comparisons with known processes and instruments have been previously made along the lines that searches must follow and the results of such comparisons made available in a classification. The vast majority of available disclosures of the arts occur in patents. Hence the Patent Office classification must be adjusted in the main to the analysis, diagnosis, and orderly arrangement of the disclosures of patents. ”

“ More recently, China has announced that when it develops standards, it will rely on either non-patented technology or patented technology with prices lower than those that patent owners would otherwise seek to charge. As a result, China's treatment of patents in the standard setting process has garnered increasing attention and concern around the world, including in the United States. ”

“ In particular, with respect to patents relevant to a particular standard under development, such measures include a provision that encourages non-participant holders of such patents to disclose the patents and provisions regarding requests for licensing declarations from holders of such patents. The United States is concerned by any suggestion that standards-related disclosure and licensing obligations extend to patent holders electing not to participate in standards development. ”

“ The United States also notes with concern the continuing challenges involved with the enforcement of patent rights in India, including challenges that some patent holders reportedly face in securing injunctions against firms that manufacture patented inventions without authorization from the patent holder. ”

“ The United States also remains concerned with patent issues, namely the apparent lack of injunctive relief in patent infringement cases, and the requirement of a valid patent as a prerequisite for receiving protection against unfair commercial use of undisclosed test and other data submitted by pharmaceutical companies seeking marketing approval for their products. ”

“ The United States continues to urge India to improve its IPR regime by providing stronger protection for patents. One concern in this regard is a provision in India's Patent Law that prohibits patents on certain chemical forms absent a showing of increased efficacy. ”

“ To make matters worse, the inadequate patent protection currently available is difficult for innovators to obtain: India's patent office suffers from a backlog of 30,000 patent applications and a severe shortage of patent examiners. ”

“ It is difficult, perhaps impossible, to lay down any general rule by which to determine when a given invention or improvements shall be embraced in one, two, or more patents. Some discretion must necessarily be left on this subject to the head of the Patent Office. ”

“ For example, it requires that patent applications for medicines be adjudicated by the Ministry of Health rather than the Patent Office, thus treating medical patent applications differently than applications from other fields of technology, in seeming contravention of TRIPS. The United States is very concerned by recent reports that the Egyptian Government has granted marketing approval for generic copies of patent-protected drugs based on the confidential test data submitted by the innovator firms. ”