No matter how good you think your relationship is with your country’s IP Office, like a plant it must be nurtured and watered regularly.

FICPI-India has historically participated – and quite actively – in almost all major activities undertaken by the Indian Patent Office (IPO) and India’s Department for Promotion of Industry and Internal Trade (DPIIT). It would not be an exaggeration to say that the IPO has, at least over the last few years, made incredible efforts to be more receptive to suggestions provided by the stakeholders and has, in fact, managed to keep them involved in major decision-making processes. 

FICPI-India has been involved with the IPO and DPIIT in various activities such as: 

  1. Providing comments/suggestions on draft Rules including, but not limited to, aspects including simplification of statement of working forms, inclusion of MSME and women inventor category. 
  2. Attending meetings with the IPO representatives on various occasions including a yearly meeting with senior officials and FICPI-International delegates on an annual basis. 
  3. Providing comments and suggestions on Draft Patent Manuals whenever IPO published such manuals and asked comments from stakeholders.  

In fact, FICPI-India has contributed significantly via submission of comments, advisories and detailed oral discussions with the IPO during some of the most significant decisions taken by the IPO in the past 15 years. 

Here are a few examples, when FICPI-India engaged with the IPO leading to some very positive results:      

  1. Efforts towards more and better electronic services
  2. Relaxation of Indian IDS requirements under Section 8 (1) and (2) 
  3. Allowance of amendment of claims (deletion of unallowable claims) at the time of entry of national phase in India 
  4. Making available a video conferencing facility for hearings 
  5. Relief on substantial official fees charged earlier for sequence listing 
  6. Issue concerning allowance/non- allowance of TM-16 claiming user date
  7. Markush claim, its allowability and wording thereof  
  8. Simplification of statement of working form (Form 27)

It was, therefore, natural that the IPO would always send invitations to FICPI-India for its stakeholder meetings and consultations. However, it came as a surprise to the Executive Committee of FICPI-India, when a high-level stakeholders meeting was called at DPIIT; but we, along with a few other prominent stakeholders, were not included in the invitee list. 

For the local associations to keep on making contributions towards the interest of the members and adding value to them, it is crucial that they remain engaged with the local IP offices. 

Keeping this in mind, on behalf of FICPI-India, I wrote a letter to the Controller General of Patents, Designs and Trade Marks (CGPDTM) Office in late January this year explaining why FICPI-India should invariably have a place at such high-level meetings. 

My letter to CGPDTM office is quoted hereafter: 

“Dear Sir, 

It has come to our attention that a meeting for stakeholders consultation by the Secretary, Department for Promotion of Industry and Internal Trade (DPIT) has been organised on January 13, 2020 at DIPP in Delhi. 

FICPI-India, a Non-Governmental Organisation representing the interest of the Intellectual Property Attorneys in Private Practice and having membership from almost all top IP Attorney firms in India appears to have been missed out in respect of this invitation originating from your good office. As you will appreciate, FICPI-India has all these years participated in all major activities of IP India and DIPP including stakeholders meeting on various issues. It represents the interest of a very crucial section of the stakeholders and has played an important role in shaping many practice and policy decisions in all these years. 

I, therefore, request that just like in the past, an invitation to this meeting be as well extended to FICPI-India through its secretariat. We assure you that only a single representative from FICPI-India will participate in the above-identified meeting. 

Also, I request that for all future meetings with DIPP, DIPIT and IPO, please, do include FICPI-India in these meetings so that views of FICPI-India members may not remain unrepresented in these circuital meetings. 

Kind regards, 

Swarup Kumar
Secretary, FICPI- India”

This was seen in a very positive light by the DPIIT and IPO and we were then extended an invitation (just as in the past) to that meeting and all other meetings since then. The earlier meeting in question related to a critical aspect of Indian patent law and practice, i.e. simplification of the Form for submission of statement of working of granted patents. We were represented in such meetings by our senior member, Mr. Caleb Gabriel, and I’m pleased to report that Form 27 (statement of working form) was amended by the IPO substantially along the lines of suggestions made by FICPI-India. 

The lesson learnt is that irrespective of how things shape up occasionally, it is critical that as an IP practitioners’ organisation, engagements with the respective IP Offices should always be kept alive. 

If we do not add value and keep our IP Offices engaged (and even if we do), sometimes we may not  get desired response/result but the important thing is to keep them involved and politely remind them that we are important stakeholders and we can’t be ignored.      

FICPI’s view and involvement 

FICPI is uniquely placed to gather and give insights from the international IP community, promote common solutions and advocacy for private practice, and to highlight the skills and contributions of independent IP attorneys. The work of FICPI-International and groups in building and developing strong relationships with IP Offices helps to ensure that the needs of IP attorneys and their clients are fairly represented. 

Next steps 

  • Consider getting involved in a FICPI National Association, National Section or Regional Section, or with a FICPI Committee
  • Attend FICPI webinars and in-person events (when Covid-19 coronavirus restrictions are lifted)