Who am I: Pondering the (Existential) Puzzle of the Patent Office

Who am I? A question that has puzzled philosophers for centuries. A question that will continue to intrigue us till the end of time. A question that is beginning to haunt our very own patent office. For if recent whisperings are anything to go by, a writ petition is slated to be filed by a group of patent officials urging that they ought to be considered as “scientists”. And not just as mere administrative/executive agents of the government of India!

Not that these patent personnel crave the snob value tethered to this tantalizing title (“scientist”), but are more keen on tapping into the perks that come with it. Perks in the form of a robust career advancement scheme, as opposed to the present predicament where no patent official gets promoted, unless there is a vacancy at the higher echelons.  Indeed, many examiners have languished as examiners for more than a decade, since there have been no vacancies for the position of Controller!

The FCS Controversy: Am I a Scientist?

Our SpicyIP fellow applicant Vasundhara had blogged about this sordid saga that has been playing out for many years now. Where patent officials (backed by the DIPP and the Department of Science and Technology) have repeatedly requested that the FCS (Flexible Complementing Scheme) be applicable to the patent office as well; a scheme meant to incentivize government scientists/researchers and applicable to all organisations that qualify as “scientific and technical/technological” (S&T) institution.

So, does the patent office qualify as a “scientific and technological” (S&T) institution? If it does, examiners are entitled to a time bound career advancement scheme; an incentive that would have made this largely thankless job a bit more enticing. Unfortunately, while we focus on patent standards, panoramas and the like, we’ve all but forgotten these “institutional” potholes that require fixing. For one, unless we have motivated examiners that stay on the job for a while, cultivating expertise and experience along the way, how can we ever hope for a robust patent examination system?

Put another way, no matter how well we craft our legal standards for patent examination (replete with section 3(d) and all that), all will come to naught if we don’t have enough competent and motivated people at the patent office to unscrupulously and diligently do their job. There is significant anecdotal evidence and some empirical evidence to suggest that patentability determinations at the patent office are less than robust. Something pointed out by the Indian Pharmaceutical Alliance (IPA) some years ago, when they alleged that a great number of pharmaceutical patents were wrongly granted (in blatant contravention of section 3(d) etc).

Unfortunately, with the advent of more partnerships and licenses, and as I’d predicted several years ago, the IPA and others are less vocal in their opposition to problematic patents filed by big pharma.

More recently, this vexamination by the Indian patent office was empirically demonstrated by scholars Sampath and Shadlen, who argue that section 3(d) does not make too much of a difference to patent grant rates and the Indian patent office is as good or as bad as others in letting through problematic secondary pharma patents covering different dosage forms, polymorphs and the like.

(ps: no, I did not spell “examination” wrongly! I’ve taken the liberty of using the term “vexamination” to refer to examinations undertaken by unduly vexed/frustrated/annoyed examiners, whose sense of frustration with their service conditions (no likelihood of promotions and having to put up with haughty controllers) is likely to have some impact on the rigour with which they examine patent applications).

All in all, tis’ a real tragedy that even as do unto death the issue of “incentives” and its alleged link to spurring innovation, we all but ignore it when it comes to recruiting the best for the patent office; and more importantly, keeping them there. In the absence of anything else, qualifying a patent official as a “scientist” ensures that such examiners are able to avail of the career advancement schemes normally available to scientists and researchers working with the government of India.

DIPP vs DoE

The DIPP needs to be commended for supporting this move of the patent officials. Unfortunately however, the Department of Expenditure (DoE) has been playing spoil-sport! The entire chain of correspondence is now available on the SpicyIP resources page, more than amply demonstrating the repeated requests from the DIPP and the continued refusal by the DoE to play ball. So dive in and read when you have a moment (under the title “RTI Corner”) and you will get a good sense of this existential dilemma.

One could argue that the Department of Expenditure (DoE) is not way off the mark in its interpretation. For the FCS scheme interprets the term “science and technology” thus:

“the benefits of FCS shall be extended only in such Departments as are involved in creating new scientific knowledge or innovative engineering, technological or medical techniques or which are predominantly involved in professional research and development and / or application of scientific knowledge. The modified criteria for identifying departments as scientific and technical and parameters for determining scientific activities and services, scientists and engineers and scientific posts will be as in the Annexure II to this scheme.”

Annexure II then goes on to stipulate that the key criteria for identifying institutions as scientific/technical ones is that:

“They should be involved in creating new scientific knowledge or innovative engineering, technological or medical techniques or which are predominantly involved in professional research and development work.”

(note: the above definition is from the Modified FCS guidelines in DoPT OM No. AB-14017/37/2008-Estt (RR), dated 10/09/2010)

Contending that the task of patent examination amounts to the “creation of new scientific knowledge” or “innovative engineering” or qualifies as a predominant “research and development work” is a bit of stretch. However, one might possibly argue that the term “application of scientific knowledge” could include patent examination (prior art searches, assessment of novelty/inventiveness as against the prior art etc) as well. However, it bears noting that this extended phrase “application of scientific knowledge” is only present in the preambular part. The actual governing text of this definition (Science and Technology Organisation) as found in Annexure II does not mention this term; an oversight no doubt given how little attention we pay to the formulation of laws and policies in this country!

Fighting Flights Away from the Patent Office

Given the interpretative conundrum above and the obstinate stand of the Revenue Department, the ideal solution is to create a sui-generis career advancement scheme for our patent professionals without trying desperately to fit them into pre-existing problematic labels that may not admit of an easy fit. This has been done for scientists working in DRDO and Departments of Atomic Energy/Space. No reason why we cannot have such a separate scheme for our patent personnel, give how important patents are for our national policy goals. As the 6^th Central pay commission (CPC) rightly notes:

“….various time-bound promotion schemes may be necessary for scientific organizations as the morale of the scientists has to be kept high in order to keep them motivated and to stop the flight of talent from Government organizations involved in research and scientific activities.”

Our patent office has also seen many a talented “flight” away to the private sector. But more worryingly, it suffers a non-infusion of talent at the start, owing to the dismal service conditions. And we need to fix this soon. As I’d mentioned earlier, the most optimal way to fix this is through a stand alone scheme for the patent office rather than squeezing it into a problematic “science/R&D” definition. However, given the nature of the Indian bureaucracy and the resistance to change, this will take a while to translate. In the meantime, what do our poor brethren at the patent office do?

Likely Court Ruling?

Will the court be sympathetic to their concerns, and order that they be inducted into the FCS scheme? Particularly since both the DIPP and the DST have strongly recommended that the patent office to be included within the FCS. It is pertinent to note that under existing FCS policy, the primary task of evaluating whether or not a government department or agency qualifies as an S&T vests with the DST (Department of Science and Technology). Given that the relevant DST committee did adjudge the patent office to qualify as an S&T organization (an assessment heartily supported by the DIPP and endorsed by the Department of Personnel and Training (DoPT) as well), can the Department of Expenditure second-guess this evaluation? Is this not a process violation that can be leveraged by a court that wishes to mete out substantive justice here? More so since the Delhi High Court in the Nitto Denko case appears to have endorsed the applicability of the FCS scheme to the patent office.

And this brings me to the last issue that I intend to tackle in this post, and a hugely problematic one at that.

Patent Office: Administrative Agency vs Quasi Judicial Body

In its repeated refusals to consider the patent office as a scientific institution, the Department of Expenditure (DoE) categorically states that it is nothing more than a mere “administrative ” agency undertaking the largely boring “administrative” task of patent examination! Is this so? Aren’t determinations of patentability essentially “legal” determinations? Rendering the patent office (in the main) as a quasi-judicial body?

For how can one assess patentability, without first evaluating the scope and ambit of various statutory terms (computer software per se, efficacy, method of treatment etc). Such legal evaluation of the statutory “standard” is then combined with a factual evaluation to yield an ultimate decision on patentability of the alleged invention. A task that is quite distinct from a traffic cop whose job is to simply apply a determinate legal “rule” (no driving beyond 60km/per hour) to fact situations and make largely administrative assessments.

As a number of scholars and courts have stated, at the heart of most patentability determinations lies the issue of “inventive step” or “non-obviousness”? Courts have repeatedly stressed that “inventiveness” is a mixed question of law and fact. As noted in this piece, “..the factual part of the inquiry concerns the prior art, the differences between the invention and the prior art, the level of skill in the art, and other considerations. The legal part of the inquiry requires determining whether the differences between the invention and the prior art would have been obvious to one of ordinary skill in the art.”

To this extent, the patent office sits apart from a number of other government agencies (whose tasks may be largely administrative in nature). It is predominantly a “quasi judicial” institution, whose determinations partake of a judicial character and involve a significant amount of legal proficiency (more so when a pre or post grant opposition against the patent has been mounted and parties have to be heard, and principles of natural justice followed etc).

Of course, such a characterization raises the larger issue of institutional design and autonomy. If this body boasts a predominant “quasi-judicial” hue, then should it not be made a bit more independent of the government? A government that may perhaps have fallen prey to the pressures of US industry (the alleged assurance by the Govt to the USIBC that no CL would issue was denied later: but in tones so soft as to make a meek mynah blush).

Importantly, if the patent office is a quasi-judicial institution, isn’t it imperative to impart legal training to the various patent personnel? Is this being done on a regular basis?

Conclusion: Whither Institutional Interrogations?

Interesting institutional issues there. But then again, who cares about long-term institutional issues? As someone once wisely remarked: in the long run, we are all dead! Neither our government nor the courts appear keen on thinking through the harder (and perhaps more intractable) policy issues. Our Supreme Court rushes in to admit petitions on Sardar jokes and the return of the Kohinoor, but fears to tread when a carefully crafted and extensively researched PIL filed by Dinesh Thakur raises serious issues of public health and patient safety: showcasing how our drug regulatory ecosystem is one of the worst in the world!

Nay: we appear all too happy with our quick fix solutions, often missing the wood for the trees! I refrain from using the term “Jugaad” only because I believe the term has been extensively maligned and tethered to a largely negative connotation of an undesirable short cut (often unethical). I believe it has a significant positive hue around it (creative solutions in resource constrained settings) and we need to resuscitate it from its negative undertones, admitting of the possibility that a short term jugaad approach does not necessarily militate against  a more long term sustainable solution.

Ps. Am currently working on a paper on this theme (the nature of the patent office and patent examination) along with Rahul Bajaj. So hoping to bring you something a bit more nuanced in the weeks to come.