The "Kurian" Effect: Increased Efficiency at the Indian Patent Office

“…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.”

In part, our optimism at Mr Kurian’s appointment was based on his past legacy, and most notably his stint as the industry secretary in Kerala.

Our optimism was offset by the caution sounded by others. Latha Jishnu noted in the Business Standard at:

“Is the appointment of an IAS man a good thing for the patent office which is clearly in need of an overhaul? But so is the vast machinery of the Government of India which has the very same babus at the senior level. Will this be yet another case of the IAS being allowed to spread its grasping tentacles further without any thought for the outcome? Some patent analysts are clearly delighted with the development merely because it marks a change, which they believe is for the better.”

Given that Mr Kurian has been at the helm for a just under 3 months now (he assumed office on Jan 22, 2o09), what has been his legacy? Were we justified in our optimism? Or is too early to tell? We leave the better judgment to our readers, after bringing you an overview of some of the changes that this high energy bureaucrat who is not known to mince his words has brought about to the patent office machinery.

Circular Demanding Expeditious Disposal of Patent Oppositions

Within a month after he took charge, Mr Kurian issued a circular, asking that all pending opposition decisions be disposed of expeditiously. Apparently, in a number of opposition cases (both pre grant and post grant), the respective controllers had heard the cases several months (and perhaps years back) but had not yet issued their decisions.

Mr Kurian’s circular mandated that all pending opposition decisions was to be cleared by the end of March 2009. The circular also stated that in future, all pre-grant decisions ought to be issued within a month of the final hearing by the Controller and all post grant decisions within 3 months of such final hearing. And that if necessary, hearing officers ought not to be allotted further cases until they cleared the cases that were already pending with them.

An order similar to the one relating to patent office “opposition” decisions was issued in the context of trademarks as well.

It’s Raining Patent “Opposition” Decisions!

The flurry of recent opposition decisions that I had mentioned in the last post (dealing with the recent submission of the revised Mashelkar Committee Report) owes itself to this circular. I reproduce portions of that post below:

“If one takes stock of the huge number of patent office oppositions in the recent past that denied patent rights to many pharma patent application (many of them excluded under section 3.d), one will see the force of this logic. Some of these recent rejections are listed below:

1. Pfizer’s Applications Claiming Caduet (rejected pursuant to a PreGrant Opposition filed by Torrent Pharma)

2. Novartis‘ application claiming the alpha crystalline form of imatinib mesylate (oppn filed by Sun Pharma and Okasa)

3. Glaxo’s Application for Rosiglitazone Salt

4. Gilead’s application for the Tamiflu drug (Oseltamavir): Pursuant to pre-grant oppn filed by Cipla. In particular, I would recommend our readers to this extremely well reasoned decision of Dr Kardam that goes into some 50 odd pages!”

Mihir will bring you a detailed post on the Gilead post grant opposition decision soon. Incidentally, in two articles (both available on SSRN: here and here), I had opined (along with Tahir Amin) that the patent covering the Oseltamavir composition was not likely to issue, since it was non obvious and likely to contravene section 3(d).

Also, in an earlier post, I opined that Pfizer’s “Caduet” was an obvious combination (of Lipitor and Norvasc) and therefore not patentable.

Anyway, back to the “Shinkansen” like Mr Kurian. If only our courts could take a cue from him. The appellate hearings in the Tarceva patent case (between Roche and Cipla) concluded in September 2008. And yet, despite more than 7 months going by, the judges are yet to issue their decision! We are also yet to hear from Justice Bhat on the controversial drug linkage case (involving Bayer and Cipla) which has been pending for about 2 months now.

Circular Mandating Expeditious Publication of Patent Office Decisions

A few days ago, Mr Kurian was at it again. He issued a circular mandating that all applications that had matured for publication under section 11A of the Indian Patents Act ought to be published immediately. As many of you familiar with the working of the Indian patent regime know, every patent application ought to be published upon the expiry of 18 months from the application date or priority date, whichever is earlier. Under the rules as they stand now, the patent office personnel in charge of publication get about a months’ time to publish the application after this 18 month period expires. Of course the applicant can even request an earlier publication date–but in any case, the date of publication cannot cross the 18 month limit outlined above.

National phase applications (in the context of the PCT) are a little tricky in this context, as the 18 month period may expire even before the application enters its national phase in India. Which obviously means that the application needs to be published immediately, after it enters India. However, do the rules stipulate any time line for this? Or would this only be subject to the one month rule that binds the patent office personnel above?

Apparently, in the Delhi patent office alone, there were thousands of applications that had matured for publication as early as 2005! This explains the strong tone in the circular (issued on 15 April, 2009) which ends with the ominous warning that any contravention of the said circular would be “viewed seriously”.

Conclusion

Speed–thy name is indeed Kurian!

If he continues at this pace and with this formidable spirit, the Indian patent regime will come in for some serious overhaul–an overhaul that will increase its efficiency exponentially and make it comparable with the best in the world.

One can only hope that this man is given the leeway to push through the desired changes and that politicians (patents are an intensely political subject matter in India) do not play spoil sport.

To conclude, I take you back to the question that I posed earlier: were we justified in our initial enthusiasm and optimism at Mr Kurian’s appointment? I certainly think so! But let’s wait and watch what the future has in store for this bureaucrat and his mission to reform an agency that is increasingly coming under attack for its non transparent, corrupt and inefficient functioning.