Indian Patent Office Breaks with Tradition and Gets a New Chief


SpicyIP just learnt that a career bureaucrat (IAS officer) has taken over as the new Controller General of the Indian Patent Office.

SpicyIP congratulates Mr PH Kurian, a 1986 IAS (Indian Administrative Service) Officer on his appointment as the Controller General of Patents, Designs and Trademarks (CGPDTM). Mr Kurian’s appointment signals a fundamental break with tradition, as hitherto, the Indian IP office has always been headed by an insider (typically an examiner at the IP office who has risen through the ranks). And with the exception of Mr Ravi (the erstwhile Controller General and a trademark specialist), most such appointees have been patent specialists.

Mr Kurian has no IP background, but has worked as a career civil servant (IAS officer) in a wide variety of capacities, including most recently, as the Principal Secretary to the Department of Industry, Kerala.

Having an IAS officer head the Indian IP office is of monumental significance, and reflects the growing importance of this office. One of my colleagues even mentioned that a government rule (that stipulates that any government agency that is worth more than 100 crore rupees in turnover needs to be headed by an IAS officer) may have triggered this appointment. Any of our readers with more insights into this process and these alleged rules?

Interestingly, Joff Wild (of the reputed IAM (Intellectual Asset Magazine),) Duncan Bucknell (an internationally renowned IP strategist) and me discuss the qualification that the head of a patent office ought to possess. In other words, should such patent chiefs have a background in “patents”? The consensus amongst us appeared to be that it would be far more preferable to have such a post filled with someone blessed with common sense, rather than someone with a more of a “patent” sense and less of common sense.

Else, as Joff opines, someone as talented as President Obama would never even be considered for the post of the US Patent Commissioner. It ought not to be lost on our readers that America may be one of the very few countries which has had a former US Patent Commissioner elected as President (tis Thomas Jefferson that I speak of)…. perhaps signalling the importance of patents to this country.

SpicyIP hopes that Mr Kurian’s appointment will usher in some fresh thinking at the Indian patent office. As many familiar with the Indian patent office are aware, fresh and innovative thinking is an absolute must for this office, which has hitherto been beset with several problems, including understaffing, lack of “specialised” examiners/controllers, sub optimal access to specialised patent databases, sub optimal training and mentorship, high rates of attrition and issues of “transparency”, something that has been the focus of this blog and mainstream media as well. Needless to state, the recent spike in the number of applications pertaining to complex areas of technology such as pharma, biotech etc has only added to the pressure.

To complicate matters further, we believe that recently, a great number of Examiners were suddently promoted as “Controllers,” making the Examiner: Controller ratio almost 1:1!

We wonder how this skewed ratio is likely to impact decision making at the patent office, given that the primary responsibility with examining an application lies with “Examiners”. In particular, we wonder if the patent office is hiring more Examiners to fill in the gaps? Secondly, what were the reasons underlying this sudden surge in promotions? Did the office really need so many new Controllers? Did existing Controllers resign or leave? Or are Controllers being vested with new responsibilities now? Can any reader familiar with these developments throw some light?

To those not familiar with the structure of the Indian Patent Office, here is an extract from a report that I’d prepared for the India-EU TIDP (trade and investment development) programme):

“The Office of the Controller General of Patents, Designs and Trade Marks (CGPDT) is a subordinate office under the Department of Industrial Policy and Promotion (DIPP) in the Ministry of Commerce and Industry (MoC&I). This Office has the statutory responsibility for administration of patents, trademarks and industrial designs and serves as a main source of policy advice to the Government of India on industrial property matters. The Controller General of Patents, Designs and Trademarks (the Controller) is the administrative and statutory head of the Patent Office and the Trade Marks Registry. The Controller as also the various examiners and other officers are appointed by the Central Government. It is in this sense that the patent office qualifies as a government agency. Although the Act vests most powers in the Controller, it stipulates that such powers can then be delegated by the Controller to his subordinate officers. It is important to appreciate that while certain acts of the patent office qualify as ‘purely administrative’, others would qualify as ‘quasi judicial’.

The Patent Office is headquartered in Kolkata and has branch offices in Mumbai, Chennai, and New Delhi. The Patent Office performs duties relating to the granting of patents as set out in the Patents Act, 1970, and the registration of industrial designs under the Designs Act, 1911.

The number of personnel at the Indian Patent Office (IPO) are as below (as of 31 March 2006)

• One Controller General
• Two Joint Controllers
• 5 Deputy Controllers
• 33 Assistant Controllers at the Patent Office.
• 141 examiners (although sanctioned strength is 157)
• 140 support staff”

Again, for the benefit of those not entirely familiar with the Indian patent office, the hierrarchy appears to be (in increasing order):

1. Examiners (number varies each year)
2. Senior Edaminers (number varies each year)
3. Assistant Controllers (number varies each year)
4. Deputy Controllers: (number varies each year)
5. Joint Controllers: (normally 2)
6. Controller General of Patents Designs and Trademarks: 1

The skewed Examiner: Controller ratio might be one of the first things that Mr Kurian may need to fix. As he goes about his job, many eyes will be tracking him, perhaps in the fond hope that with such a high profile appointment, at least some of the issues plaguing the Indian patent office will come to be fixed in the near future.

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. AvatarAnonymous

    There is a minor correction in the hierarchical setup of the patent office as written in the article. There is no position of Senior Examiner in the Patent Office. Such a position exists only in the trademark registry. Also, recruitment of new Examiners is a long drawn process, given governmental constraints,and may take a minimum of 2 years.These examiners have to be trained to become proficient in examination which would again take at least 2 years. Right now the office doesn’t require so many Assistant Controllers as these posts were simply created under plan without any existing vacancies. In addition these new Controllers have not been transferred to other branches as is the norm in Central Government organizations. They have been allowed to prolong their stay in a single place for as long as 6 years. Usually ‘Group A’ Officers are transferred on promotion. Few Assistant Controllers from Kolkata were transferred to Delhi as the controller-Examiner ratio in Kolkata was abnormally skewed.The organization seems to have an arbitrary promotion and transfer policy. There seems to have been a large scale collusion just to complete this process before the change in leadership took place.The exchequer has also incurred a heavy burden without adequate reason. We can only hope and pray that the new Controller General takes note of all these discrepancies and applies his mind and wisdom to clean the Augean stables of the patent office of India.

    Reply
  2. AvatarBiju K Nambiar

    Dear Shamnad,

    The ministry of Commerce and Industry has been trying for a long time to place an IAS officer in the high profile post of the CGPDTM. Initially it had tried about six years back by giving additional charge of CGPDTM to Mr.Ahammad a Joint Secretary in the Department of Industrial Policy and Promotion (DIPP). However, he had to step down after a few months consequent to a court order. This was upon a writ petition filed against the appointment saying it was in violation of the recruitment rules for CGPDTM. According to the recruitment rule in force then, the CGPDTM should have the science background which he did not have. Thereafter, excepting mr.S.N.Maity who was sacked after one year of service because of various allegations, the other three appointments of CGPDTM were on ad-hoc basis.

    Subsequently, the recruitment rules were amended to facilitate even a non-science person to become the CGPDTM. Mr.Ravi who is from the Trade mark side got ad-hoc appointment in light of the foregoing amendment.

    Anyway, the new appointment is a welcoming step by the government, because the Indian IP office required badly a good administrator rather than a technocrat to set the things right. Let us hope, given his vast and diverse experience, Mr. Kurien will live up to the expectation of the Indian IP community.

    As a part of the modernization drive of IP offices, envisaged under the 11th five year plan, more than 400 new posts have been created in Patent, Trade marks and Design offices. The mass scale promotion to the examiners should be viewed in this background. Also, considering the attrition, the job of the patent examiner has to be made more attractive. You can’t retain the quality work force without providing reasonble incentives to them. This will ultimately affect the quality and efficiency of the examination process too. I also understand that the patent office is planning to hire about 200 examiners shortly. The issue of imbalance in the proportion of the examiners and the controllers will be solved then.

    There is a small mistake in the patent office’s hierarchy as you have given. There is no post of senior examiner in the patent office. The next post after examiner is Asst. Controller. There are posts of Senior Examiners in the Trade Marks Registry.

    Reply
  3. AvatarAnonymous

    Another serious issue to be addressed by the newly appointed CGPDTM is regarding the vaccant posts of trademarks registry.There are many senior level posts of trademarks registry not filled up for so many years.At present there are 2 JOINT REGISTRAR (out of four),4 Dy.Registrar (out of seven),6 Asst. Registrar ( out of eleven),8 Senior Examiners( out of 14) are vaccant in the TRADEMARKS REGISTRY all over India. Due to the inadequate officers many of the functioning of trademarks registry are lagging behind.Most of the officers working in the trademarks registry are on Ad- hoc basis which is stopped by the Central Govt in the year 1996 itself and the office is still following the same format for the past 13 years. Many officers are working in the same cadre they joined and the office is not bothered about to give promotions in time.

    Reply
  4. Avatarindian.patent.agent

    As on 15th January, some 40 Examiners have been promoted to Asst Controller, of which 13 are from Chennai. Some have also recieved promotion with transfer.

    As already mentioned above the Office is looking at a recruitment drive soon. There is a news that shortly an advertisement for 250 exmainer will be out. However it is for a temporary contract for 2 year which then may become permanent. This is similar to the requirement recently filled in by the Trademark Department last year for Trademark Examiners, the pay too will be more or less the same.(Unofficially – 13k)

    The promotion is a step towards implementing this.

    Reply
  5. AvatarAnonymous

    Interesting that Joff Wild talks about President Obama and the post of the US Patent Commissioner. In line with the call of for an Open Government, I came across these suggestions at the Dennis Crouch’s Patently-O blog about improving the transparency at the Patent Office. Although we have a long way to go anyways considering the state of the website, data updates etc, probably these would be of some
    help.
    http://www.patentlyo.com/patent/2009/01/six-easy-suggestions-for-improving-patent-office-transparency.html

    Here is an extract:

    1. Make petitions decisions available. Challenges to certain decisions by patent examiners and PTO officers go through a petition process to the Commissioner of Patents rather than through the Board of Patent Appeals and Interferences (BPAI). These cases include disputes involving revival, patent term extension, patent term adjustment, patent term restoration, reexamination petitions, petitions involving filing dates, petitions involving disclaimer of scope, refund petitions. Since January 1, 2005, the PTO has not posted any petitions decisions to its website. Thus – unless a party knows the specific case number and obtains it through the Image File Wrapper in the Patent Application Information Retrieval (PAIR) system – the petitions are inaccessible. Conventional wisdom is that petitions practice can be something of a black hole — unless the PTO decides to act quickly. This is only conventional wisdom, because the actual practice of the office is hidden. All petitions are decided in the petitions office by either the Commissioner of Patents or a petitions officer, and it would be an easy change to start publishing all petitions decisions as they are released in once convenient location on the PTO website.
    2. Make public PAIR information available for automated download — either through the PTO website or through a third party willing to make the information publicly available. The PAIR system is amazing in the information that it provides. However, it is clunky and wastes a tremendous amount of time to access each individual case. File history information is important because claim construction decisions now rely on that information in interpreting the claims. In addition, file histories are an important source of prior art – especially in the way that the documents can provide contextual information on how different elements may fit together. Yet, PAIR is not generally searchable and data cannot be obtained in any bulk way. This must change. I will be more than willing to work with PTO to and others to create a system that works. Although I am not wedded to this approach, I would favor a system that embraces the possibility that individuals and companies will take-hold of the data stream and use it in creative ways.
    3. Publish the standard metrics used by PTO executives to measure the process flow and quality. Of course, this should be done in a way that maintains some semblance of privacy for PTO employees, but I doubt that the executive-level charts include specific names of the 6,000 examiners. Of course, I don’t know because these items are not publicly available.
    4. Allow search engines to crawl through the PTO web-servers. Matt Buchanan wrote an interesting post on President Obama’s new ROBOT.TXT file for the whitehouse.gov website. [LINK] Obama has apparently opened the site to allow it to be crawled by any search engine. The PTO should follow suit so that documents posted to the website can be found through Google, Yahoo, CURL, Alexa, etc. Remember, the touchstone of publication is whether it is accessible to the public. Many documents on the USPTO.gov website are worthless because they are too difficult to find through the locked-down search procedures available on the current website. This is an extremely easy change. It took the White House a few minutes to make the change, the PTO could be done in the same way. Kudos to the PTO — After I wrote a first post on this issue, two PTO officials contacted me to indicate that they were working on resolving the issue.
    5. Use PDF format to allow download of patents and patent applications in their “Standard” form. This would be a bonus, but it is not required since there are low coast ways to obtain this result through an outside vendor. One problem with using an outside source, however, is the possibility that search information may be stored and used against the searcher at some point.
    6. Openly respond and post all responses to freedom of information act (FOIA) requests on the PTO website. The PTO has created a FOIA website that is hardly searchable. And, most FOIA documents are not placed on the FOIA website. Any response to a FOIA request should be automatically and immediately uploaded to the FOIA website so that it is accessible to the public at large rather than to only the one person who requested the information. As a teacher, I have learned that if one person asks a question, it is likely that other folks had the same question. In most cases, the PTO could upload the documents and save mailing costs by simply providing a link. President Obama has ordered all executive agencies to “adopt a presumption in favor” of FOIA requests, and this change would fall in line with the spirit of that request.

    Reply
  6. AvatarShamnad Basheer

    Dear Biju and the others,

    Thanks so much for the wonderful comments. And for providing these very interesting snippets of information, which are not otherwise available to the public.

    Most importantly perhaps, thank you for being polite whilst pointing out the error in the hierarchy drawn out by me. A number of our rude commentators could learn a lot from you i.e. that one can point to flaws in posts whilst still being polite and courteous about the whole thing. Incidentally, I was given this “senior examiner” information by a very reputed patent lawyer from India. I will confer with him again and point out that this does not appear to be the case.

    Reply
  7. AvatarAnonymous

    @indian patent agent above:
    This person appears to be a recently promoted assistant controller from Chennai who is trying to justify the promotion.According to him,”Some have also received promotion with transfer”.None of the recently promoted controllers from Chennai have been transferred. Only new controllers from Kolkata have been transferred.Why were these people from Kolkata alone transferred? In the Indian patent office there are more Assitant Controllers than examiners now. It is well known that there is a requirement for engineering experts, especially mechanical engineering experts in all branches. In spite of the shortfall for mechanical engineering experts none were transferred.Further,according to Indian patent agent “There is a news that shortly an advertisement for 250 examiner will be out”. This might be the first time in the history of Indian governmental service that on the rumour that some officers might be appointed, a huge mass of officers drawing substantial salary have been promoted along with the accompanying perks.Isn’t the department answerable to the ministry of finance? Do they have an effective PAO? Or are they a law unto themselves playing around with taxpayers’ money? As “anonymous” of the first post has rightly pointed out that recruitment of examiners on such a large scale is going to be a time consuming process and is not going to take place immediately.What harm would have been done if the organization had waited for the alleged recruitment of new examiners before hastily promoting others? It is learnt that this group of officers were not recruited according to prescribed norms and hence the hasty move to cover up matters by committing yet another blunder. This appears to be a “governmental Satyam scandal” in the making.
    Finally Shamnad, it is human to err and divine to acknowledge it graciously.

    Reply
  8. AvatarAnonymous

    If experts are worried about the effective functioning of the IP system in India the topic of the day should be proper guidelines for examination,100% digitised documents and an official patent office database which the US and EP has,standard examination module softwares,following uniform working procedure in all patent offices,deviate from the agent friendly culture,be a common mans office,increase manpower to impart more efficacy,and imparting 100% transparency in the working procedure.Promotions and transfers can only affect/encourage individual interest and as the system requires they will be done if needed.Clearing the baglog and raising to a greater height in the international scenario should be the need for the common man who desires to get a patent for his invention.

    Reply
  9. AvatarPrasad

    The system in Indian Patent Office is fully corupt one. Perhaps this CGPDTM is wearing a dark glass on his eyes. After 8 months, this CGDPTM is incapable of improving the system. He is enjoying his foreign tours only!

    The nexus among the senior controllers of patent office with the patent agents is still there. There are old Assistant Controllers/Deputy Controllers who still enjoy the bribes and facilities from patent agents by the way of allowing “bad patents”. I guess, as a CGPDTM, Mr. Kurian knows all these facts.

    Besides these, there are some recently promoted Assistant Controllers, Deputy Controllers who mis-guide the CGDPTM by way of mis-reporting against their “dis-liked” officers/staffs. A TYPICAL BABU-CULTURE has again grown up in the system.

    Have Mr. Kurian ever thought of these corruptions? What he is doing is nothing but an eye wash to media. His “peers” are still doing the “harm” to the Indian Patent System. There is no upgradation of the system.

    If CGPDTM really wants to do something he can transform the system like European Patent Office and segregate the groups. This is an intellectual service as that of EPO. Therefore, officers without knowledge MUST BE separated from the system and they should be posted for “loose” jobs other than examination, grant and decision making.

    It is urged upon Mr. Kurian and Govt of India not to hold old haggard in a particular office for a long period of time. Please transfer these rubbish “buddhas” immediately so that a TRANSPARENT POLICY is seen by all.

    Reply
  10. AvatarAnonymous

    dear sirs,

    The above discussion is very inormative.. please give me ur valuable guidance..i ve recently given the examination of “Examiner of patent and design” conducted by DIPP.and am expecting the positive result. presently I m working in a PSU..please give some focus on the nature of job of patent examiner and also it was stated in the notification that “the no. of posts are temporary and are likely to continue”. If i got selected, can i leave my present job and join as patent examiner securely?please give me advice… waiting for your responces…

    Thanks in advance,

    Regards,

    Jagadeesh

    Reply

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