One is a petition that we wish to submit to the Patent Office, as is detailed in this post below. The other is a surprise that will be offered upto you only on the “D” day.
Petition for More Patent Information to be Made Public
As for the petition that is the subject matter of this post, it is addressed to Mr PH Kurian, the current Controller General of the Indian IP office. It calls for more transparency in the administration of the Indian patent system by interalia, providing more accessible patent information. As many of you may recollect, we made a similar petition to the government in 2007, which elicited a favourable response.
Pursuant to this letter and our intervention at the Patent Stakeholder’s meeting in Kolkata, the government assured us that the database (with easy to access and searchable patent information such as patent specifications and patent office decisions) would be available by March 2009. Unfortunately, the database is yet to be complete. We are therefore requesting the government to indicate a broad time line now.
We are also calling for more patent related information to be made public –including all correspondence between patent applicant and the patent office (prosecution history), patet office circulars that impact patentability, “working” statements, claim amendments, section 8 information (on corresponding patent applications elsewhere).
We are also asking that the government be technology neutral whilst implementing the database and providing this information. As of now, it is near impossible to get any information out of the Indian patent office database, without using Internet Explorer. We are also requesting the government to organise a workshop to brainstorm and get the best ideas for effectively leveraging India’s IT capabilities to build state of the art IT tools for the Indian patent office.
Importantly, we are also requesting that patent titles and patent abstract information be very clear and reflective of the inventive concept–and that patent applicants that deliberately obfuscate such information be taken to task.
Below is the draft letter that I propose sending, after eliciting signatures from those of you who are interested in requesting this additional information/change. It would be great if you could suggest any additions or amendments to this letter (or deletions also, if called for). In particular, do let me know about your experience accessing the Indian patent office website and database–and your recommendations for improvement in this regard. In one of the sections, I have outlined one of the errors in the document storage–let me know if oyu have more examples.
I hope to put this up for online signatures this coming Sunday..ie. the World IP Day. So if you have any comments, please try and send them (preferably using the “comment” function on this blog post) before Sunday. Thank you very much.
Letter to Mr PH Kurian, Controller General
Mr PH Kurian
Controller General of Patents and Trademarks
Indian Patent Office
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 is interested in bettering the current Indian patent regime. May we therefore please put forward the below recommendations to you?
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 quite well in Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141, 150-51 (1989: where the court held that “the patent system embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and non-obvious advances in technology in return for the exclusive right to practice the invention for a certain period of years”.
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) 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 enabled all that he has claimed. As you are aware, the patents act requires that all the claims be supported by appropriate description of the invention in the text of the specification.
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 43 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
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.
To this end, we urge you to work closely with the highly talented software community in India to devise 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.
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 MORE DATABASE INFORMATION
As we mentioned earlier, we commend the government for making great strides in bringing us a 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 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, 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.
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.
We provide a detailed note assessing the various sections in this regard pertaining to what information can be made available.
iii) Publishing Updated Information
We request that the patent office website provide updated information each week of published applications, patent grants and patent office decisions. At the current moment, the webpage in question merely has a search box to help one identify specific information that one is looking for.
However, it does not tell any member of the public about 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 have a view of the most recent patent related information.
iv) Publishing Patent Office Circulars (and Patent Manual)
The Dimminaco case wherein the Kolkata High Court ruled against a patent office decision denying patents to material that contained a living organism 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?
vi) Publishing “Working” Information and Section 8 Information
Unlike most other patent regime, our patents act 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.
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.
v) 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—however, there is a considerable time lag between the issuance of such 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.
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.
E 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.
F 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.”
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,