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Why utility models won’t help India

Munish Sudan of Tata Steel tells Peter Leung about the need for increased IP awareness, the improvements that he would like to see in the Indian Patent Offices, and why he doesn’t think that utility model patents would foster innovation in India.

Q (Peter Leung): What are your duties at Tata Steel?

Munish Sudan

A (Munish Sudan): I am the senior manager of IP and innovation management R&D and scientific services and I have a number of different duties. One of my duties is to manage Tata Steel’s portfolio of over 600 patent families. We look at how we can further develop this portfolio and strengthen it. Innovation is important to us, so we have internal targets for growing this portfolio. Also as part of profile management, we constantly figure out which patents have potential applications not just in India, but in other places like Europe, where we have a research centre, as well as Kazakhstan, South Africa, Japan and China.

Related to this work is also patent intelligence. We keep tabs of our competitors and their patent portfolios to try to figure out what their strategies are and develop our own. This is particularly important because big international steel players are filing a lot of patents in India. There’s a lot of interest in India as a growing economy so we need to be fully aware of the other players in order to compete.

I am also responsible for promoting IP awareness within the company and make sure that employees, from the researchers to marketing to management are aware of how IP is important to them and the company.

Of course, I also have typical patent attorney duties, including drafting and searching for patents. We have an internal team that works on this as well as a number of external firms that we trust and use.

Q: What are some of the biggest IP-related challenges that Tata faces in India today?

A: I think a major challenge is the relative lack of awareness and respect for IP in India. IP is a very old concept, but awareness of it is relatively recent in India, since around 2005 when the Patent Act was amended. Since then, people have been talking about needing to focus on IP, branding, copyrights. In 2004, the Tata IP Management Programme was instituted to create IP awareness within Tata companies.

"You have a lot of people in India who are still not aware how IP can be a big asset for a company."

IP in India is then still a new subject. You have a lot of people in India who are still not aware how IP can be a big asset for a company. Companies need to learn that IP is extremely important and without it, survival may be impossible. For a long time Indian companies had focused on manufacturing without any emphasis on technological innovation. I think now companies have started understanding the need of technological innovation for market differentiation and to compete in global markets. In light of this, corporates need to understand how IP protection is needed alongside the research and development to exploit the developed output.

Related to this need for more awareness, I think that there is still a lack of respect of each other’s intellectual property. One of the reasons for this is also that there is no established proper infrastructure - if a company wants to launch a new product in India and wants to conduct a freedom-to-operate, Indian patent information retrieval is a big concern.

Q: What changes then would you like to see to the IP system?

A: My personal opinion is that the overall patent system needs strengthening. Right now, it can take four to six years to get a patent or more. This can be very frustrating for commercialisation in industries like electronics where innovation cycle is very short. There can be a lot of delay at the patent office, so this compounds some of the procedural problems.

Q: What procedural problems concern you?

A: One of the biggest problems is that patent searches are just extremely difficult. The patent search systems are not nearly as sophisticated and useful as the ones at the USPTO, EPO or the JPO. They’ve made some improvements, such as implementing rudimentary keyword searches, but it is still not very robust. You can also go into the office and search through millions of hard files, but that is not feasible or effective.

Furthermore, sometimes when you’re searching the files, it is unclear whether the office has updated all the legal status and information for a particular patent.

All of these problems again can be very frustrating if we want to introduce a product. We need to do careful searches to make sure we’re not infringing on others’ patents, but the only resource I have is the patent office.

This is just a very difficult problem. The patent office has talked about fixing it and has made some improvements, like adding keyword searches, but it is still not up to the level of places like the USPTO, the JPO and the EPO.

Q: Is there anything rights holders can do to address these shortcomings?

A: There are some private companies that will digitise the patent records and you can search those, but there’s always the issue of authenticity and completeness. You have no way of knowing whether your results are free of errors.

Q: What do you think of patent quality in India?

A: I think that can be improved as well. There needs to be more training of the patent professionals and communication channels need to be more robust. When a patent is granted, there needs to be proper review and arguments like in other more mature systems.

Q: In 2011 there was some discussion about introducing utility model patents in India. Do you think this is a good idea?

A: This is my personal opinion, but we need to first work on strengthening the patent system overall. For example, if you can speed up the time it takes to grant a patent, perhaps there may be less need for a utility model system.

"I am concerned that a utility model system may actually make the system worse by adding more to unexamined patents"

Similarly, I think it is more important to help patent professionals do their jobs better, such as making it easier for them to search patents as well as having better lines of communications with the patent office. Since these problems still exist, I am concerned that a utility model system may actually make the system worse by adding more to unexamined patents. It’s difficult enough searching for patents right now and adding utility models may make the system more of a mess.

Another reason people sometimes give for introducing utility models is fostering incremental innovation in developing nations. However, I believe that relaxing the patenting criteria may not be the appropriate solution. Any innovation should be tested, evaluated and proved – the patent office should ensure that quality of every granted right is foolproof.

Q: Do you think there has been progress in the last five years or so?

A: Yes, there has been some progress, especially since 2005. As I mentioned earlier, the patent office now has some search functionality; it just needs to be improved.

India’s economy is rising and we are competing with other big nations. Having a technological advantage is important in helping India maintain its leading role.

The government understands this and the fact that we need to build our own technology. It is encouraging R&D, for example giving tax breaks for certain types of research.

However, with more innovation, we also need better IP understanding and protection to protect that research. If you put a lot of effort and resources into your R&D effort, you don’t want it copied so you need a robust system to protect that R&D. Research and development and strengthening IP goes hand in hand.

Munish Sudan will be speaking at Managing IP’s India IP & Innovation Forum on March 7 in New Delhi. To register, click here.

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