Jacob Schindler

Shortly before our holiday break, IAM updated readers on the situation at the Indian Intellectual Property Appellate Board (IPAB). The body, which hears appeals of Indian Patent Office decisions and orders, had been without a leader for almost 18 months. For that entire period it has lacked a quorum to decide on any case involving patents, and so a backlog has steadily built.

But just before the New Year, the Department of Industrial Policy and Promotion (DIPP) announced its appointment to the top job: retired Justice Manmohan Singh, formerly of the Delhi High Court. Anything that moves the board a step closer to being functional will be welcome to patent owners. As lawyer Essenese Obhan told me, the impact over the last year on clients who want to appeal decisions on key, business-critical patents has been “disastrous”. Moreover, Singh has a reputation for rendering pro-rights holder decisions, having ruled on high profile IP cases spanning trademark exhaustion, online intermediary liability for copyright, pharma patents and SEP injunction requests.

However, it does not appear that the Board is ready to start ruling on patent matters yet, as both the vice chair and technical member for patents posts remain vacant, according to the IPAB’s website. Moreover, SpicyIP points out that Singh is also the chairperson of another administrative tribunal unrelated to IP, and will not be giving up that post. Obhan estimates that there are a couple thousand unheard IPAB cases, and that it could take four to six years to hear them all even with a full roster. For members to be working on a part-time basis will not do much to speed up the process.

And let’s not forget that the whole appointment process remains under something of a constitutional cloud, not unlike the PTAB which is awaiting the US Supreme Court’s verdict in Oil States. At least six parties are challenging the rules by which Singh has just been installed, essentially arguing that the power of the executive over these appointments is an intrusion on judicial independence.

The end of 2017 also gives us a chance to see what progress has been made against a much bigger backlog – that of patent applications. The key obstacle is human resources. But just over a year ago, we reported that the DIPP had brought on 458 new patent examiners. The big hire saw the examiner corps triple in size compared with four years earlier. The office’s stated goal is to reduce pendency to 18 months by the end of 2018. But the injection of fresh blood also means a large share of working examiners will be relatively inexperienced, and coupled with a high expected work rate, that could lead to quality concerns (thus making a full strength IPAB even more critical!).

Last week, the government informed parliament that the current backlog at the Indian Patent Office stands at 232,000 patent applications. This is not the highest figure we’ve seen, but it is a formidable task for examiners. Looking at the month-by-month statistics for 2017 provided by the office, which have been collated by Banana IP, the patent office published a total of 38,417 patent applications in calendar year 2017. Over the same period, examiners awarded 13,440 grants.

While we don’t have the full data on how many total applications were disposed, the number of grants suggests a significantly higher work rate. In fiscal year 2015-2016, the last for which there is a full annual report, examiners granted just 6,326 patents. All those new examiners appear to be having an impact, but whether it’s enough to start to reverse the backlog, or at least stop growing it, remains to be seen.