Indian economic reforms process began in 1991, and open market policy paved way for a larger role of private sector including foreign investment. This led to a gradual influx of foreign multinational companies launching their products in the huge Indian market. Since then, the protection of Intellectual Property has been a major issue for a number of companies who had or wanted to introduce their innovative products in India.
Indian government likewise understood the importance of Intellectual Property and has gradually taken steps to amend and adjust IPR laws to maintain parity with global standards. Most significant ones being the amendment in 2005, aimed to align with the post transitional requirements of Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement.
Notwithstanding a continuous increase in patent filings, still, over 80% are the ones originating from foreign countries, which enter India either through PCT or Convention application route. Generally, foreign companies ‘Filing’ in India engage an Indian IP firm either directly or, through firms handling their IP matters in their home territories.
Our team conducted some research regarding the widespread pricing structure in the Indian IP market during the Patent prosecution lifecycle. We found the average charges for Filing (only) an application in India to be approximately US $ 700 – 900. By Filing (only), we mean submitting a previously filed non-provisional application as PCT National Phase or a Convention application with the Indian Patent Office. This does not entail any significant efforts apart from routine paralegal work of completing forms and formalities. The subsequent charges for fulfilling India specific paperwork such as Form-3 (under section 8) was found to be around US $ 100-150, per instance which could easily 6-10 times during prosecution phase.
Multiple respondents shared about invoices anywhere between US $ 150-300 in lieu of PTO communication charges, which was actually for sending the FER received from PTO to the client’s office. Then there are charges for FER analysis (Not Responses) – US $ 250, document handling – US $ 150 to take care of Pen/ Pencil/ Photocopy/stationary etc., and miscellaneous of around US $ 10-30 to be added from time to time. Few of our respondents mentioned about bills of US $ 80 as postal charges, which would imply in excess of INR 5,000, which to my best of knowledge has never been paid over INR 2,400 (~US $ 35) by me.
The most ironical part for me was the conversion rate of 1 US $ = INR 50, in raising bills against the official fee disbursements.
Many people might say that their client’s they don’t mind spending these amounts and they have been offering them professional services that could be charged at any rate.
Now, let us understand the tasks undertaken against this amount. In majority of cases, the application or response is filed with the Indian Patent Office, as received, without any significant changes whatsoever. This to anybody’s intelligent guess should not take more than 15-30 minutes time and e-filing for a PCT national phase application should be a few clicks task.
Thus, I would like to pose a serious question that isn’t it unethical to fleece clients under the garb of bizarre formalities and requirements of the Indian Patent System?
In my opinion charges are justified for doing work that involves real effort and not for merely acting as a postman and benefitting from the ambiguities of the system. Any amount charged for preparing a suitable office action response or amending substantial portions of an application in accordance with the patentability criteria in India could be justified, but, only filing with extremely dismal grant rate is only going to increase the uneasiness that foreign filers have started feeling now.
The reason behind this long post is the feedback received from some Global Clients about the need for an honest and transparent work culture that goes in line with the portrayal of India as the next innovation hub.
I would love to hear about some more responses that could be shared regarding similar experiences. We are working on a solution that provides transparency and justifies every penny that you pay.
If your firm needs a fixed cost Indian patent filing solution, or would be interested to know about solution that eliminates the worries about the charges incurred with each filed paper, stay tuned and keep following this space……
In about 2-3 weeks we are going to present something new, which has been created utilizing our experience of already practicing with several MNCs including two fortune 50 firms for their Indian IP needs.
