The Department of Industrial Policy and Promotion (DIPP) has in its 33-page discussion paper dated May 13, 2011, discussed the viability of introducing grant of patents for “utility models”. The objective is to examine the possible role of utility models as a system of incentives that spurs domestic innovation, although it may not match up to the standards of the Patents Act.
I will take up analysis of the paper in subsequent posts, but readers please note that the DIPP has invited comments and suggestions on Section X of the paper entitled ‘Issues for Resolution’ and any related issues, by June 30, 2011.
Issues for Resolution
1. Does India need a Utility Model Law?
2. What should be the scope of protection of such a law? Should it be restricted to mechanical devices?
3. What parameters should be adopted in the law with respect to inventive threshold, substantive examination, grace period, exhaustion, protection period and registration procedure ?
4. What novelty criteria should be adopted? Should they be absolute or relative?
5. What should be the nature of linkages between this law and the existing Patents Act? How do we ensure that the existing Patents Act, which is a bulwark against the ever greening of patents , remains undiluted ?
6. What legislative route should be adopted? Should a separate law to protect utility models be enacted ? Or should the Patents Act be suitably amended ? Or should the Designs Act be amended?
7. Should the facility for temporary protection of an invention as a utility model pending grant of a patent be built into the legislation ? Should it be specifically mandated that only one form of protection would be available at any time?
8. Should applications for patents be transmutable to utility model applications and vice versa whenever the applicant so desires ?
9. Should any specific provisions be introduced in the proposed utility model law to promote domestic filings as well as applications from SMEs? Can we use this model to protect some part of our traditional knowledge?
10. What enforcement procedure should be put in place? What should be the dispute resolution mechanism? Who should be the adjudicating authority?
11.To obviate monopolistic dominance, should the adjudicating authority be empowered wherever public interest is involved, to award compensation/royalty in lieu of restraining the infringement ?