Joff Wild on the Allegations Against Indian Patent Office


The inimitable Joff Wild has a very pointed review of the Mint article that exposed high level corruption at the Indian patent office.

Before I review Joff’s take on this rather unfortunate state of affairs at the patent office, let me thank all our readers for their comments to Kruttika’s hard hitting post on this issue. Some of the comments made for very interesting reading! Kruttika is now working on a post that will highlight the key aspects of a report by an Austrian government entity (AWS) that also raises similar issues about the unethical nexus between patent agents and patent office personnel. The Mint article by CH Unnikrishnan and Khushboo Narayan, though not based on this report (since the Mint investigation re: the Indian patent office began several months back), relied on it, in some parts.

In an earlier post on his widely read IAM blog, titled “Indian patent grants raise serious quality questions”, Joff noted:

“During its 2007/08 financial year, which ended at the end of March, the Indian Patent Office granted a record 15,262 patents, more than double the 7,539 issued during 2006/07. That is an extraordinary figure, given that from what I understand there are well under 200 patent examiners currently plying their trade in the country.

You do not have to be a great mathematician to work out that if there are 130 examiners at the Indian patent office, each one would have had to approve over 100 of the applications he or she dealt with during 2007/08 to get to that 15,262 figure. By contrast, I think there are around 1,300 examiners employed by the EPO, which last year granted around 54,700 patents.

It all goes to make you wonder about the quality of the patents now being granted in India. “

In his latest post, Joff draws on his earlier concern and notes that the Mint allegations, if true, could help explain these huge grant rates. He however cautions that the alternative explanation could be that the Indian patent office is more efficient than their counterparts in the US or EU.

I’d love to think that this is the case, but have reason to believe that these huge numbers come more out of a bias/culture in favour of grants. As an examiner that I spoke with about a year back bluntly put it: “If I reject an application, I have to give reasons. So why bother? Particularly when most of my rejections are routinely overruled by my boss (typically an Assistant Controller).”

In his note, Joff urges patent owners to query their lawyers (patent agents) on this unfortunate revelation of an unethical nexus with the patent office, to ensure that their patent grants are in no way implicated. He notes:

“It could well be that the LiveMint story is wrong and that the Indian Patent Office is actually doing an amazing job, despite the low number of examiners it has. But if I were a multinational I would want to be absolutely certain that nothing untoward was happening in my name. It seems to me that there is a duty on all those who use the Indian patent system to demand straight answers from their professional representatives and to ensure that no abuses are taking place. If they do not, it could well come back to haunt them further down the line.”

I couldn’t agree with Joff more. To weed out institutionalised corruption, all stakeholders have to come together and put pressure on the patent office/government to increase transparency in the patent grant process. A corrupt office and a corrupt patent granting process is an evil that we can ill afford.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

10 comments.

  1. AvatarGeorge

    While I fully agree on the concern about the quality on the granted patents if those figures are correct, just a little comment which rather makes the figures even more ridiculous: You are speaking of “around 1,300 examiners employed by the EPO having granted last year around 54,700”. While one has to look also on the total number of treated applications in a year to put this in perspective, there are in fact around 3,900 examiners (about 60% of all staff) employed at the EPO on the three sites (Berlin, Munich, The Hague) – according to the latest Facts & Figures of the EPO (http://www.epo.org/about-us/publications/general-information/facts-figures/2008.html).

    Reply
  2. AvatarAnonymous

    Just to add little, if there is a patent application filed in India for which European or US patent is granted then it is common practice in Indian Patent Office that Indian patent will be granted on that basis. Indian Examiners often hesitate to follow this practice for applications which are scrutinized and tracked by third party (mostly pharma applications) for pre grant opposition.

    Reply
  3. AvatarPatent

    For the kind of pittance they are giving in the name of salaries, The govt of India can’t get better examiners. Agents and others who criticize the patent office should be made to work in the patent office for at least a short span of time to realize the conditions under which examiners are forced to work. Another option would be to ‘import’ examiners from abroad. But even they would find the conditions in the patent office stifling and quit at the drop of a hat. A better option would be to shut down the patent office and stop granting patents. But that would be detrimental to the interests of firms who rake in humongous amounts for doing ‘post-office’ work. The monthly quota for an examiner is 10 applications per month in addition to amended cases,language classes, hearings, discussions with applicants/agents. The equivalent quota in developed countries is 5 per month.If this quota is reduced, this same blog will happily write an article on how inefficient Examiners are. Although there are black sheep among examiners, such reports are highly demoralizing to otherwise sincere, hardworking examiners in the patent office.But we are learning to take such things in our stride.Too much criticism sometimes can have the opposite effect.

    Reply
  4. AvatarShamnad Basheer

    Dear George:

    Thanks very much for the correction. You’re absolutely right–the current number stands at about 4000 examiners who do an average of about
    55,000 patents every year. Which makes the comparison with the IPO even more startling.

    In fact, I sent your comment to Joff Wild, who responded as below:

    “Your correspondent is correct, there are well over 3,000 EPO examiners. In 2007 they granted 54,700 patents, or 51% of the procedures that the office completed.

    From my very rough maths, on average each EPO examiner handles between 30 and 40 applications from beginning to end each year, and makes 15 to 20 grants. How does that compare to the IPO? And EPO examiners have been striking because they claim they are overworked and this affects patent quality:

    http://www.iam-magazine.com/blog/detail.aspx?g=db01e572-169b-44b7-83d1-df77b6234c4e

    Reply
  5. AvatarShamnad Basheer

    Dear Anon,

    You raise a very valid point. And I am inclined to agree with you to a certain extent that the job of an Indian examiner may be easier, since he/she may be privy to a decision already rendered by the US/EPO. Two questions:

    i) is this always the case? what percentage of cases are decided by another office before the IPO examines them?
    ii) even assuming a USPTO decision has been rendered, ought the Indian examiner to blindly rely on this without investigating it in accordance with indian law?

    Reply
  6. AvatarShamnad Basheer

    Dear Patent,

    Our aim is not to demoralise the patent office, but to point to corrupt practices that have become more or less institutionalised now. Of course, as with every other office, there will be some that are true gems and have a strong moral backbone. We trust that these few will continue with their good work–knowing fully well that our fingers point only to their not so “moral” colleagues. In fact, it’s in their best interests that that such corrupt elements be exposed and brought to book–I trust you’ve heard of the old story of the one rotten apple in a carton full of apples.

    Reply
  7. AvatarAnonymous

    Salary: I completely agree with disparity level of salary offered in private sectors/law firms and the Indian Patent Office, but what is important to know that there are many working in private sectors/law firms who do not rake high salaries. Only few are privileged to get handsome salaries … I know people with not more than 3 years experience but getting salary in the range of Rs. 15 lakhs (u will be surprised that there are few with 8-10 years of patent experience and getting salaries in the range of Rs. 50-75 lakhs) but obviously the level of their patent understanding are far superior compared to counterparts. As far as patent examiners are concerned what else they can ask for … big cabins, babu-style working, no performance evaluation, no overtime and importantly government perks and privileges. But most of the professionals working in private sectors/law firms do not have any type of perks and privileges (particularly offered by Government and we all know value of government perks in India), secondly high-performance pressure, demanding workload and overtime, and most important to stay updated with case laws and market dynamics. There are many instances where professionals working in private sectors diligently analyze more than 15-20 products/processes for patentability/patent clearance in a month in addition to their routine work. I know few cases where patent examiners left patent office and joined private companies just for higher salaries but later struggled to sustain in competitive environment.

    Reply
  8. AvatarIndian.Patent.Agent

    Why do people look at the glass half empty?

    Yes there is lot of shortcomings in the Indian Patent system. But compare it with other government departments. Did any of you visit a RTO, a police station, a Tasildar’s office, a municipal office, Income tax dept, or a passport office? Now go visit a Patent office, shall we now play the game ‘spot 6 difference’, I can spot 6000 differences. Tell whom do you want to be dealing with (if you had to)?

    I still cant digest the fact about the accusation made at the Asst Controller who was friendly enough to give ‘moral help’ to the inventors and how it was misinterpreted by the reporter and Spicyip.

    Accept it the Patent office is the most efficient and modernized office of all the government departments. You compare the Indian Patent office with the European Patent Office Can you even think of comparing other Indian government offices with the developed nation (EP, US or JP)? People should think about the surrounding before writing, and just not keep complaining about everything.

    The Patent Examiners (Gazzeted Class -A Officers) are all well educated people some appointed through UPSC. People complaining, try getting a job there, and work there at that pay they get.

    You complain about their English, did you know they also study Spanish, German, French, Hindi, and Russian? All apart from their normal quota of 10 files a month. Be happy that they do your work in English and not ask you to file application in Hindi or Bengali or Marathi or Tamil or other regional languages (unlike the Chinese/ Japanese/ French/ German/ Korean/ Spanish/ Russian Patent office). Did you do your math on the translation cost it would incur the applicant?

    Yes I know the Examination report is not up to the standard. But I can still name good Examiners and Controllers at the Patent office.

    Now discuss about the agents (like ME) who have to deal with them. People have to understand that the clients are mostly from the developed nation who has no idea how India works. The agent is caught in between both, the system and the client.

    Yes, I am embarrassed to forward the Examination report to my client who cannot understand the objections, which make my job even more important.

    Only the agent knows the difficulty he faces to place the application for grant. If only it was so easy as you project it to be. An agent who has been working for years would appreciate the present situation.

    Corruption do exist, but not at such a large scale as projected. A couple of cases backdated, or a few individual cases drafted by examiners and maybe even some cases bribed to be granted., but how much can one do?

    Come on, be realistic and try using common sense. How can anyone cover-up if it was supposedly done at such a large extent. It is possible for an individual or a small company to get through, but for companies like IBM, give me a break.

    Big players (agent/Firms) have reputation and respect at the office, but then who doesn’t? If you have been practicing for decades, you should be. Take for instance take the senior advocates, the judge shows respect for their reputation and experience, does that amount to corruption?

    This reputation and experience counts, and so does the success rate. Then why should clients engage Ram Jetmalani or Abishek Sangvi/Arun Jatley (Roche Vs Cipla) or even our ‘IP Guru’ Praveen Anand for their cases.

    Doesn’t a client want Praveen Anand to appear at the Opposition hearing before the Controller? Why do they do that? Because they respect his experience and hard earned reputation or do they think he has a ‘cozy relation’ with the official?

    One can easily hide mustard or even an apple in their hands, but no one can you hide a watermelon.

    This report is trying to make mustard into watermelons. Well journalists are supposed to do that, they earn their bread and butter through this.

    The problem lies in the under staffed office and the workload on them. The easy way the Examiners find is to accept the case. Moreover all the Examination of the national phase application cites the International Search Report or the Counterpart European Report. Argument overcoming the citation would be sufficient to overcome the objection in India which is available to the applicant years before. I hardly get any further office actions maintaining the citation. Who would want to do that extra work? Then again would the Indian Examiner come up with citation other that what was already found out by the European Examiner? You are the one who tell the EPO examiners to be better qualified.

    Secondly there are no set guidelines on how business method or computer program per se should be interpreted by an Examiner. If in doubt, does the Controller refuse the case or give the benefit of doubt to the applicant. It is the applicant who would suffer irreparable loss if refused and there is always opposition and revocation proceeding to challenge it (if anyone would want to do so, or if anyone else suffers irreparable loss by grant of the patent).

    Now let us use common sense again. Let us take a PCT national phase application that was granted last year -2007(because of the ho-haa caused on the grant numbers last year). The last date must have expired on 2005-2006 as it takes at least 12-18 months after last date for LPD to be issued. So the Examination report would have been issued on 2004-2005. This application should have been filed in India prior 2003-2004. That means the PCT application was filed prior 2001. For these cases the applicant would have received an International Search Report by 2002 before filing application in India. The applicant would already have arguments on the cited documents 3 years back. We all know India is not on the tier 1 list of the foreign applicant unlike US/ EP/ JP/ CN where most of the applications come from. Therefore there would have been some thought gone into before filing in India. By 31 months the applicant would have known the worth of the application and the novelty and Inventive step (Don’t forget the main advantage of PCT- you get more time to evaluate your application before incurring charges in other countries).

    So applications filed in India would have been considered good by the applicant. Why else would a company want to incur charges when they know if it is bad. Or why else then all the PCT applications filed don’t enter India? Why only 33’000 filings in India and not million? Now tell me if the success rate would be higher if you already filter applications that are filed to be good?

    Further out of the 33’000 applications filed how many are actively prosecuted? How many have been allowed to lapse by not responding to office action or filing a request for examination? Why do you think they have been allowed to lapse? Because the application is bad and the client does not want to incur charges on a sinking ship.

    Before comparing grant rate with EP people should use their common sense and ask some basic questions.
    1.What is the percentage of direct filing in both Europe and India? 44% in EPO compared to 18% in India. See the annual reports of both countries available online– Very important
    2.What is the grant rate of first filing application and what is the grant rate of national phase applications?
    3.How many Indian Granted patents are also granted in Europe?

    If you have a rough idea of the answers for these questions (a practitioner would already have) you will not be surprised at the grant numbers. Let us not point fingers before we get the numbers straight.

    Some may argue that not all US applications granted are good patents, but then not all applications come to India, only the good once do.

    Did the Reporter get information on the number or Granted Vs Examined cases and number of Granted vs Refused cases U/S 15 (not u/s 21 –as cases which are allowed to lapse by not filing a response are refused under 21)? Keeping a note of the PCT application and first filing application. And what did the trend prove, irrespective of the Patent Office or the Agent. Well higher than normal percentage should be credited to the efficiency of the agent.

    Please always corroborate your comments with facts and make comparisons factoring the situations and circumstances around it.

    Indian.Patent.Agent

    Reply
  9. AvatarAnonymous

    the trademark offices are the institutions of corruption and they do it with pride and putting people in chaotic conditions and financial harm is their game .the transperency there means corruption that is visible to all without any guilt or fear.a corrupt registrar of ahmedabad mr.bansod did it with pride and his partners in crime were their political aakas ,officials and examiner mr.n.babu,mr.v.ravi,mr.dharma singh when reported of this they also fought back with the victims and living lavishly.controller has been given written complaints but he also didi nothing.all these deptts. are money spinning outlets of govt. and ministers as the minister has not taken any action against the corrupts.the whole world knows kunvar ajay foods pvt.ltd. was running the dandi brand mr.suresh chandra agrawal was the front face of that company but today we are fighting for his right as he had tried to compensate us through his brands which he never knew will fall prey to the evil indobrine industries their jobworkers one day.today the corrupt man behind all this satya narayan agrawal is getting the fruits of our money and hard work that built up our brand dandi namak.he also stole my copyright advt.a changed it and running it on t.v.i wish cbi and other national agencies should look into the dhandhlies of trademark and patent deptt.

    Reply

Leave a Reply

Your email address will not be published.