World IP Day: "Transparency" Letter to the Indian Patent Office


As the World Intellectual Property Day approaches (it falls on this coming Sunday, the 26th), we wanted to bring to your attention two things.

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

To:

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 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.

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,

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.

7 comments.

  1. AvatarShankar

    Dear Shamnad,

    Just as with patents, today we are also facing the problem of non-availability in regard to design registrations.

    So far as I know, designs are governed by the same public disclosure norms as applicable to patents. Yet, access to design registrations is not provided to the public. We do not even know if there is any plan for the patent office to place these documents online. Section 26 of The Designs Act 2000 says that the register of designs is open for inspection to the public on payment of a fee of Rs.500, with form 5 or form 6 to be filed with the Office for each design document, or certified copies must be requested. All this makes access very difficult. I do not believe that the Designs Act 2000 or the amended Design Rules comply with transparency of IP as required under TRIPS. When the US, UK and EPO make these documents available online, why should access to designs be so restricted in India? Why are design registrations not available for a small fee per page as with patents? Would like your comment on this issue.

    On top of this, the Kolkata Patent office which maintains the design registry is non-responsive to requests made by e-mail, phone or FAX. This is another serious issue that must be addressed by Mr. Kurian.

    Reply
  2. AvatarAnonymous

    It would be a great thing if all Government Offices are monitored in this manner.The public should be made aware of the existence of methods of redressal of complaints and grievances. Kurian is doing a great job fearlessly and the intellectual property department is headed to become one of India’s premier organizations.

    Reply
  3. AvatarSudhir Kumar

    Dear Shamnad,

    Great effort and Mr. Kurien appears to be also heading in same direction. I would also like you to raise the issue of Trademarks and their proseuction in India. as you would have noticed that the examination report are dispatched months after they are issued or generated. Even after filing form 16, 34 of 50 the amendments are not effected. Trademark regisrty unlike patents lacks transparecny as well as accountability in maintaining data filed under non cash. Further the examination report are issued not in order application no. but randomly and favours few selected agents whose application are registered even before others are examined. Registration certificates are not issued even after expiry of stipulated period and sometimes after one year of publication the status shows advertised before acceptance. Comparartively i found patent office more transparent and accountable. Nowadays there is again probel of Additional representaion which are not issued by registry after 45 days of filing.

    I hope you would be able to include few of these issues in your petition.

    Regards

    Sudhir

    Reply
  4. AvatarShamnad Basheer

    Dear Shankar, Sudhir and Anon,

    Thanks for all your wonderful inputs. Trademarks and designs also require some transparency petitions and my hope is that we can move a campaign in this regard soon. For the moment, we are focussing only on patents for purely strategic reasons. If the demands are too spread out and not narrow, we may not get results.

    Reply
  5. AvatarAliasgar Dholkawala

    Dear Shamnad,

    With regard to publishing of Patent office circulars, i would specifically like to stress on the need to make public, information with regard Indian patent office’s stance and requirements on patenting of Biotechnology inventions such recombinant DNA technology products, protein and DNA sequences, definition as to what constitutes a micro-organism etc.

    There have been a plethora of changes in the Patent office’s stance in granting patents for Biotechnology invention over recent times. There is however not much disclosure provided for the same due to which often the applicant ends up with unexpected objections during Examination phase.

    Regards,

    Aliasgar

    Reply
  6. AvatarShamnad Basheer

    A friend of SpicyIP who wishes to remain anonymous writes:

    “Shamnad,

    Although I am not an intended signatory, I hope you will not take umbrage my suggestion to substitute the reference to foreign case law (Bonito Boats) with an Indian one or some WIPO material (on the disclosure function of patent information, not merely the specification). The petition will then be better received, I think.

    On an aside, I cannot but help thinking how easy it is (technically that is) to have an online email subscrition service [akin to how SPICYIP delivers its posts by mail to subscribers] for each of the various online lists I have suggested in my last mail be maintained serially-chronologically.

    So for example if I wish I should be able to subscribe to an IPO email alert service on orders passed on pre grant oppositions, or of recordals of assignments, or of mid-term abandonments of patents for non-renewals, etc. Having these systems in place will serve a second much-missed purpose (other than public disclosure and oversight) as well- as ready tools for Patent Office administrators and managers including those at the DIPP entrusted with such responsibities.

    It may be too much presently to ask that the IPO also enable an RSS Feed of the acts of publication of specifications under a particular IPC [classification] head, of course, but some of the more basic items can make for a good beginning.

    On yet another aside, I wish to make a very basic and very easy to achieve suggestion for checking corruption and abuse at the IPO. Just make all filings possible only against a fee receipt (a nil fee receipt where there is no prescribed fees).

    Integrity of files at the IPO, ensuring that papers cannot be surreptitiously inserted with a back date, will be achieved thereby. The fee receipt generating system appears to me work securely enough already andd even if not so, it can easily be secured to make it impossible for any fee receipt to be issued with a back date.

    Currently, a belated filing [not just letters, communications, correspondence, Replies to FER etc. but even Forms 3, 5 etc.] on which no official fee is payable is capable of being slipped into the file bearing a bak date. As you can well understand, no sophisticated superstructure can stand without being founded on a bedrock of basic integrity of files.

    Reply
  7. AvatarShamnad Basheer

    Dear Aliasgar,

    Thanks very much for pointing this out. Hopefully making their “patentability” circulars public would reduce any inconsistencies of this sort. Whenever you do come across any such inconsistencies in this regard, please let us know and we can highlight this on the blog.

    Reply

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