A Petition Pleading for Greater Transparency and More Access to Patent Information

Dear Mr Kurian,

On behalf of several intellectual property stakeholders that are signatories to this letter, let me begin by wishing you a very happy World Intellectual Property Day.

I include all members of the public in this group of stakeholders, as the public are not only interested in technological progress and higher rates of innovation in India, but also keen to ensure that they do not pay monopoly prices for undeserved patents.

We chose this momentous day to express our gratitude for the wonderful initiatives you have undertaken, since you took office three months ago. Your initiatives have helped inject a fresh lease of life into an ailing institution and will no doubt go a long way towards making this office more transparent and more efficient.

We also chose this day to begin engaging with you as a community of IP stakeholders (including members of the public) that are interested in bettering the current Indian patent regime.

May we therefore please put forward the below recommendations relating to increasing transparency at the Indian patent office by providing greater public access to more “patent information”?

A PATENT DATABASE: PROMOTING “DISCLOSURE”

As you will appreciate, greater transparency in the functioning of the patent office can be brought about by ensuring that all patent related information is made available to the public in an easy to access, online, searchable format.

Such easy availability will also help in several other ways:

i) It is likely to encourage and strengthen the ‘disclosure” function of patents, encapsulated by the Indian Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries [AIR 1982 SC 1444], where the court noted in pertinent part that “The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain.”

In other words, patents are a social contract where a 20 year monopoly is granted in return for scientific/technological information.

As you will appreciate, this information is meaningless if it is not easy to access.

ii) Further the Indian patents act itself provides in section 10(4)(a) that every patent application “shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed”. And section 10(4)(b) goes on to mandate that every application shall “disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection”.

Importantly, Section 25(1)(g) and section 25(2)(g) provides that a patent application/grant is susceptible to challenge if the “complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed”.

The ready availability of patent specifications and claims enables competitors and members of the public to assess as to whether or not the patentee has disclosed all that he/she has claimed in a sufficiently enabling manner.

iii) Lastly, the disclosure and easy access to patent information will enable a robust use of the experimental use exception, an exception encapsulated in section 47(3) of the Indian Patents Act. Researchers that hope to experiment with such patented inventions cannot be expected to keep applying for physical copies from the patent office.

B OUR EARLIER LETTER TO THE GOVERNMENT

I enclose a letter we had sent on 3rd December 2007 to the Prime Minster’s office stressing the importance of a good searchable database with patent information including claims, specifications, and drawings.

In response to our letter, the government replied stating that that they were already digitizing patent records and that it would be complete soon. Please see our blog post for a copy of this response.

We raised the same issue at the Patent Stakeholders meeting in Kolkata and the government assured us then that digitization would be completed and the database ready by March 2009. Please see our blog post in this regard that documents this assurance.

We understand that the records in the database are still not complete. If possible, could you please indicate a likely date for such completion?

C TECHNOLOGICAL NEUTRALITY

While the current database that provides patent related information (complete specifications of applications and patent office decisions) are commendable, it is a pity that such databases can only be accessed through internet explorer, a proprietary browser belonging to Microsoft. We urge the government to be technology neutral here and permit those of us with other browsers such as Mozilla (an open source web browser) and Safari (a proprietary browser belonging to Apple Inc).

Enabling access through these other browsers will be relatively easy, given that the office can easily avail of IT expertise in a land that prides itself as an IT superpower. All one has to do in this regard is to implement the publicly available W3C standard.

D E-FILING, OPEN SOURCE AND CTO

In order to aid it in its mission of providing free and easily accessible online information through its database, the Indian patent office must insist on the electronic submission of information, wherever possible.

In this regard, we commend you for instituting the e-filing system, a system that was aimed at helping patent users. Unfortunately, most users of the e-filing system complain that the system leaves much to be desired. Owing to their lack of confidence, a number of users still prefer to file physical copies with the Indian patent office. May we please request you to examine this issue and explore solutions?

To this end, we urge you to work closely with the highly talented software community in India to devise a better e-filing system, novel software enabled databases and other tools such as search engines that will enable easy access to patent information and make the functioning of the patent office much more efficient.

Where possible, we urge you to opt for open source tools that are functionally the same or better than proprietary software, but costs far less.

Perhaps you could organize a workshop on this theme and invite all interested participants to generate ideas on this theme. Such discussions could also help you locate ideal partners for this project. In fact, we would go to the extent of urging you to create public private partnerships that will help create innovative IT tools for the Indian patent office and set an example for the rest of the world.

Could we also please request you to consider appointing a CTO (chief technology officer) for the Patent Office, who could be a one point contact person for all such IT issues?

D NEED FOR MORE DATABASE INFORMATION

As we mentioned earlier, we commend the government for making great strides in enabling comprehensive access to patent related information. The range of information that is now available via the government website is limited to:

• Published Applications
• Published Patent Grants
• Patent Office Decisions

Could we therefore please request for the provision of more patent related information as below?

i) Prosecution/File History

Since the patents act only requires that communications between the controllers and the examiners remain confidential (section 144), all other information relating to a patent grant ought to be made public. In other words, every communication between the patentee and the patent office ought to be made public. This would enable easy access to the file history or prosecution history. In this regard, may we please request you to review the working of the PAIR system in the US and provide a similar level of public access to patent related information in India as well.

We provide a detailed note (Annexure A) assessing the various sections in this regard pertaining to what information can be made available.

ii) Publishing all Amendments

We also urge that all amendments and changes to a patent application after the first publication of such application be published in a timely fashion. This would also help the public assess the working of this institution and ensure that issues of corruption are minimised.

iii) Publishing All Materials filed during the course of an Opposition

The Indian Patents Act provides for one of the most comprehensive opposition mechanisms ever known in the world. In order to make this mechanism more robust and transparent, all information pertaining to oppositions (oppositions filed, replies filed by the patentee, rejoinders (if any), evidence submitted by parties, all correspondence between parties and the patent office) ought to be published.

iv) Publishing Details of Compulsory Licenses and Revoked/Abandoned Patents

The Patents Act contains elaborate provisions for the grant of compulsory licenses (section 84, 87, 92A etc). May we request that all compulsory licensing applications and their ultimate status, the terms and conditions of such licenses (if granted), etc be published in a timely manner.

Similarly, all patents that are revoked (by the IPAB or the court or voluntarily by the patentee) or abandoned (or not renewed) ought to be notified to the public, so that the public may enter these technological areas without fear of patent infringement.

v) Publishing Patent Licenses and Other “Interests”

Sections 67 to 69 of the Indian Patents Act requires that any interest created in a patent (such as a license), be recorded in writing and registered. Such information, including licensing terms and details of assignments ought to be published.

vi) Publishing “Working” Information and Section 8 Information

Unlike most other patent regime, the Indian patents act (section 146) insists that the patentee submit statements demonstrating the extent of “working” of the patented invention. Such information needs to be made public and ought to be published on the patent office website periodically. As you know, section 84 of the Indian Patents Act provides that a compulsory license can be granted if a patent is not worked in India for more than 3 years after the date of grant.

Further, section 85 also provides that in certain circumstances, a patent can be revoked by the Controller for non-working. Therefore, it is critical that information pertaining to patents that have not been worked be published so that interested parties may apply for licenses. We are given to believe that in the early ‘90’s, such information was routinely published by the Indian patent office.

The Act also insists that patent applicants submit timely information about the status of corresponding applications in other countries (section 8). This information also ought to be published periodically. The importance of such information was touched upon in the recent decision by the appellate bench in the Roche vs Cipla case involving Tarceva, a lung cancer drug.

vii) Publishing Updated Information

May we request that the patent office website provide updated information each week of published applications, patent grants, patent office decisions and any other new patent information (as outlined above) that becomes available that week? At the current moment, the webpage in question merely has a search box to help one identify specific information (by application number, applicant name etc) that one is looking for.

However, it does not inform the public as to which publications were published or granted recently. Therefore, may we please request that when new applications are published (every Friday), this entire list be put up as a separate file on the website? And similarly, with granted patents and opposition decisions. This will enable interested patent stakeholders and members of the public to access the most recent patent related information.

Some of the potential ways in which the above could be achieved are:

i) Having a separate “date range” category in the search box on the current patent office website. Illustratively, if one enters “last 6 months” in the date range category, one should get all the patent applications/grants/decisions as the case may be of the last 6 months.

ii) A technologically superior solution would be to have to an online email subscription service, so that email subscribers can be informed of updated database status such as recent patent publications, grants and decisions. May we please refer to you Bigpatents (http://india.bigpatents.org/), a non profit database that provides Indian patent related information and offers such an email subscription facility to enable the dispersion of updated database information.

xiii) Publishing Patent Office Circulars (and Patent Manual)

In Dimminaco AG v Controller of Patents and Designs (2002) I.P.L.R. July 255, the Kolkata High Court ruled against a patent office decision denying patents to material that contained a living organism. This case exposed the fact that very often, patentability decisions are taken on “secret internal circulars”. In this case, the circular in question was sent out by the CG to all patent office personnel suggesting that no patents ought to be granted to any invention containing living material. The Kolkata office rightly ruled that since there is no statutory bar on living matter patentability, the said circular is bad in law.

May we therefore request that any such internal circulars that are likely to affect the patentability or otherwise of an invention be published on the patent office database? If possible the use of such circulars should be minimized, as such aspects can be easily fitted within the patent office manual.

In this regard, may we also request you to update us on the status of the patent office manual?

ix) Statistical Information

We also kindly request you to provide patent related data (statistics) from time to time. We understand that such information is made available annually through annual reports. Since there is a considerable time lag between the issuance of such annual reports, may we therefore please request that the website include periodic updates of statistical information. Such information could include number of patent applications filed, oppositions filed, cases decided etc and could be published either monthly or quarterly. Of course such information could be published with the caveat that in case of inconsistency, only the final figures laid before Parliament annually are to prevail.

E DE-MYSTIFYING PATENT TITLES AND ABSTRACT INFORMATION

It is rather unfortunate that a number of patentees deliberately mislead their competitors and the public with the titles of patent application and/or their abstracts. The patent office must insist that titles and the abstract reflect the essence of the inventive concept as best as possible. Objections on this count could be raised during the examination process (and in the FER and other like documents).

As you will appreciate, it is on the basis of titles and abstract information that one often decides to further investigate the application or grant in question with a view to challenging it or using the information for other purposes, such as “experimental use”. Therefore, the deliberate obfuscation of such valuable patent information is against the very essence of the patent system and what is stands for. In particular, it eviscerates the “disclosure” function of patents outlined earlier in this letter. The above requirement finds legal support as section clearly states that

Section 10(1) of the Indian Patents Act provides that “every specification shall begin with a title sufficiently indicating the subject-matter to which the invention relates.” (emphasis provided by authors).

Further Section 10 (4)(d) of the Act provides that: “Every application shall be accompanied by an abstract to provide technical information on the invention”.

It goes on to provide that “the Controller may amend the abstract for providing better information to third parties”, once again highlighting the importance of accurate “disclosure”. (emphasis by authors)

The above provisions are further endorsed by the Patent Rules, 2003. Rule 13 (e) clearly provides that:

“The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.” (emphasis by authors)

F CORRECTIONS IN EXISTING PATENT INFORMATION

While we appreciate the benefits of the current database, we are also constrained to bring to your attention certain errors, some of which we are listing below:

i) Some of the entries have been entered wrongly. Illustratively, when searching the term “Pfizer” in the category titled “Public Search for Patents (No. 1-80,000)”, the first string of results that pops up lists an application numbered 27125 as the first result and indicates that the applicant is “Chas Pfizer and Company”. However, when opening the document, one gets a completely different specification which is numbered 27126 and states the applicant to be “Tootal Broadhurst Lee Company Ltd”.

We know that it is not possible to have the perfect database on day one. However may we please request that the office provide patent stakeholders and members of the public with some online avenue to bring these errors to your notice, so that it may be rectified?

We note that the website lists out Mr SK Roy as the contact person in this regard, to whom emails have to be sent. It might be far more optimal if the patent office had an online forum where such mistakes could be highlighted and addressed. This way, other users could also be informed of these discrepancies and also know when such discrepancies are corrected.

G THE RIGHT TO INFORMATION (RTI)

We conclude with an extract from our letter to the Prime Minister dated 3rd December 2007:

“Creating such a database will also conform with the mandate under the Right to Information Act (RTA) to make such information available to the public. Most importantly, urgent action in this regard will serve as an excellent example of India leveraging its IT prowess to achieve a worthwhile public policy goal.”

As you are no doubt well aware, Section 4 (2) of the RTI states that:

“It shall be a constant endeavour of every public authority to take steps …to provide as much information suo motu to the public at regular intervals through various means of communications, including internet, so that the public have minimum resort to the use of this Act to obtain information.”

Section 4(3) then goes on to state that “every information shall be disseminated widely and in such form and manner which is easily accessible to the public.”

We thank you for your consideration and are hopeful that you will be open to public input of this sort, aimed at helping improve the functioning of the Indian patent system.

Thanking you very much, we remain,

Most sincerely yours,

Shamnad Basheer
Ministry of HRD Professor of IP Law
NUJS, Kolkata

And other signatories (please see attached list)

Cc: Dr Manmohan Singh, Hon’ble Prime Minister
Shri Kamal Nath, Minister for Commerce and Industry
Mr NN Prasad, Joint Secretary, DIPP