Patent attorneys await clarifications on govt's start-up IP scheme

Clarity required on fee structure, procedures to follow in filing IP

Even as the Patent and Trade Mark authority of the country has empanelled patent experts as patent facilitators for Intellectual Property (IP) filings by start-ups, the attorneys are still waiting for clarity on various aspects including the fee structure.

The Controller General of Patents Designs and Trademarks (CGPDTM), under the Department of Industrial Policy and Promotion (DIPP), has come out with the list of facilitators who can work with the start ups to file the patents, trade marks and designs under the scheme for facilitating Start-Ups Intellectual Property Protection (SIPP).

Under the scheme, which has been launched as a pilot project as part of the Prime Minister's Start-Up India initiative, the patent applications are expected to be fast tracked and there is expected to be a rebate of 80 per cent on official fee for filing the patent application, said experts. The Government of India is expected to bear the facilitation cost.

While the scheme is expected to support the start ups who look at registering a trade mark, design or a patent, the actual process would have to wait for some more clarification from the authorities, especially when it comes to the fee structure prescribed in the scheme.

While attorneys have started start ups approaching them for registration, there is lack of clarity on things including the details of the fee structure and how exactly the procedure will be, said a patent attorney who has been empanelled as a facilitator.

Another lawyer added that the if the prescribed fee is the only payment the facilitator is going to get for the filing of patents, serious patent professionals would not be interested to take start ups as their clients under the scheme.

According to the scheme, the fee for the empaneled facilitators for any number of patents trade marks or designs that may be applied for by a start-up, is fixed as a total of Rs 20,000, if it is without opposition and Rs 15,000 if it is with opposition, for patents. For trade marks it is Rs 7,000 if there is no opposition and Rs 10,000 if there was an opposition against the claimed mark. For deigns, the fee is Rs 4,000 if there is no opposition and Rs 6,000, if there is an opposition.

While the fees for Trade Marks and Designs seems to be agreeable to many, the fee for patent filings seems to be discouraging for many, and that is where they seek clarity.

A patent expert said that a patent document is a highly technical and legal document, which has to be prepared with proper care and expertise and even a small mistake in it could result in serious impact on the particular patent in a long run. At present, there is a cost involved in drafting the patent document, applying for a first examination report (FER), responding to the objections raised by the examiner in the FER, drafting further amendments, among others, apart from the formal process of filing the patent application. If the fee is for the entire process, one has to look at how many established attorneys would be happy to take up the Start Up cases, said experts.

Besides, while the protection of Intellectual Property is key to the progress of start-ups and innovation in the country, there is little work done on the original side of R&D in the country, says industry experts.

An industry expert said that there are very few tech start ups which are doing actual R&D and innovation in India.

There are also views that the definition of Start Ups under the Scheme could exclude some of the potential start ups in the country from the ambit of the scheme. For the Scheme, the Start Up is an entity incorporated or registered in India not prior to five years, with annual turnover not exceeding Rs 25 crore in any preceding financial year, working towards innovation, development, deployment and commercialisation of new products, processes or services driven by technology or intellectual property provided that such entity is not formed by splitting up, or reconstruction, of a business already in existence.