Overview
The Public Notice dated 16 December 2022, issued by the Office of Controller General of Patents, Designs, & Trademarks, Boudhik Sampada Bhawan, Mumbai, announced the much awaited and promised adoption of complete digitized e-filing and processing of design applications by the Designs Wing of the Indian Patent Office (IPO) in order to expedite the procedure of industrial design registrations in India. The current changes are brought into force with effect from 1 November 2022.
Key changes brought in by the Notice
No requirement to file physical documents, except the specified documents
The public notice specifies that henceforth an Applicant shall not be required to submit physical Forms and documents except assignments, attested/notarized copy of the original Power of Attorney/General Power of Attorney or original affidavit, if any. The documents, as prescribed in Designs Rules, 2001, are required to be digitally signed (as per Sections 3 and 4 of the Information Technology Act, 2000).
As per the current practice, the Applicant is required to submit all documents in physical form at the Kolkata Patent Office within 15 days from e-filing of a respective document. Such a requirement of preparing and submitting the documents twice, once for e-filing and then for the physical submission tantamount to the complexity of the process and increased cost. However, following the new guidelines, the Applicant is now required to only e-file the documents and not the physical copies of the documents, other than assignments, attested/notarized copy of the original Power of Attorney/General Power of Attorney or original affidavit, if any, at the Kolkata Patent Office.
Reduction of formal objections in First Examination Report
With the requirement of physical documents being done away with, the objections related to re-submission of Form 1 and submission of ink signed representation sheets, raised in each First Examination Report (FER), are now expected to be removed, thereby giving a breather to the Applicant and the practitioners. With the issue concerning two most common objections raised in the FER being addressed by the IPO, many applications may be allowed without issuance of an examination report. The Applicants may thus see quicker grants of design applications, with many design applications getting allowed directly after filing.
Issuance of e-certificates
As per the notification, the Design Wing of the Patent Office has started issuing e-certificates of designs, with effect from 1 November 2022. According to this practice, all design certificates shall now only be electronically generated and e-mailed along with its registered representation sheets to the email address provided in Form 1.
L&S IPR Team comments
All things considered, we believe the new practice of electronic filing of new design application and electronically generated design certificates will have a positive impact on the Design practice in India bringing the design practice on par with those of the USPTO and the EUIPO as it relatively streamlines the process of filing the design applications. The digitization will not only lead to a paperless process, to an extent, but will also reduce the complexity and cost involved in filing of design applications in India, as the procedural time and cost of design registration will be significantly reduced. Digitization of the design filing and processing will also reduce the burden of the Applicant pertaining to the simultaneous online and offline submission of the documents, by minimizing the submission of documents in paper format. The new process may also expedite the process of registration of the designs and the Applicants will feel encouraged to file design registrations, especially start-ups and small entities, as they may now receive certificates of design registrations in a shorter time.