The latest reform which has been introduced by the newly appointed Controller General Mr. P H Kurien on the recommendations of the fifth Consultative Working Group on Patents , Designs and Trademarks in India (held in April, 2009) is the issuing of electronic notifications to patent applications which has come into effect from the beginning of this month. Correspondence in electronic form will go a long way in expediting the process of obtaining patents.
The notification dated 19.06.2009 was published on the website on 23rd June, 2009. It said that all communications including notices and examination reports to patent applications, patent agents would be sent through electronic email that has been mentioned in their documents. It instructed applicants or agents who have not provided their email ID to submit the same to their respective Patent Offices. It also directed patent applicants/patent agents to fill in their e-mail address in the application for patent (Form-1).
Introduction of electronic communication will lead to easing of the burden of both the patent office and the applicants. There is no need for the applicant to be physically present at the mailing address. The delay owing to traditional means of communication often led to abandonment of the patent application. In the words of FICCI’s Director General Amit Mitra “Introduction of electronic correspondence is a boon for stakeholders as it will ease the task of patent prosecution in India, especially for applicants residing in foreign countries.” This is an important step taken by the Patent Office towards meeting international standards and speeding up the patent process.
Spicyip thanks Sheetal Chopra of FICCI for bringing the news to our notice.
If it goes in the right direction, it is indeed a good measure but what needs to be seen here is that all communications will be sent through unsecure channel. Communications,whatsoever, are confidential information and by sending it through ordinaty channels we are just diluting the confidentiality associated with patent (at least till grant). Though this had been specifically pointed out in one of the meeting with the technical heads but I don’t think such a request has ever reached the CG.
Besides, improving mere procedures won’t increase the efficiency of teh system. The CG also needs to look into matters such as requirement of comprehensive examination reports, disposition of matters well within final date if not before etc.We are waiting for directions in these regards from the CG.
According to the Patent Act, The controller has to communicate a gist of the objections submitted to him by the Examiner. This means that the Assistant/Deputy Controller has to read & understand the report submitted by the examiner and prepare a summary and then send the same to the applicant.Earlier, controllers had no jobs except to simply sign the report prepared by examiners on the note sheet. Then examiners were forced to send reports to applicants with their own signature in contravention of the law.Now Mr.Kurian has realized this and is making Controllers do their jobs by signing on the reports themselves. This has caused great resentment amongst controllers as now they would be answerable for the quality of patents.This path-breaking move seems to have earned Kurian the respect of Examiners while inviting the ire of Controllers.He has also done away with the traditional system of putting up papers and implemented the electronic mode thereby expediting the whole process of grant of patent(Refer the Patent Office Procedure on the website).The problem now is that with only 70 Examiners it would be difficult for the Indian Patent Office to dispose of pending cases.In some branches Assistant/Deputy Controllers have agreed to do examination of cases with a view to help ease out the situation.However in other branches, controllers are citing legal excuses to escape from the examination process. With no indication of recruitment of new Examiners in the near future, this could spell doom for the patent office as filing rates clearly point towards north hence leading to a huge and potentially unmanageable backlog in the not-so-distant future.
@ nish154 above:
Whats the need for confidentiality here when the application for patent has been published?
In most other countries the communication between the Patent office & the applicant is available to the public on their websites. When we are striving for transparency of govt offices,especially IP offices, if such reports are kept confidential, we may never come to know what transpired between the patent office and the applicant(i.e if some cozy dealings were involved). Now that Kurian has ordered that all examination reports have to be signed by the Controllers themselves and forwarded to the applicant, there is a greater need for the communication to be made public because there have been many proven cases of Controllers abusing their authority to earn a quick buck. It is well known that many controllers themselves draft patent applications for their clients, have them examined by ‘pliable’ examiners & then proceed to grant the case without much hassle.In case the application is allotted to an honest examiner by mistake and he recommends the rejection of the case, the file often goes ‘missing and becomes untraceable’. In some cases when an application had been rejected by an Examiner, all traces of examination were removed on the file and it was re-allotted to the same examiner for examination. This was the audacity with which the Controllers operated.The recent case of Deputy Controller of Mumbai Patent Office, M.A.Hafeez being caught with his hand in the cookie jar by the CBI in a corruption scandal proves this point.
Security of the transmitted document should not be an issue as there are options like using a secure web link (https:).We can rely on Kurian to take care of such issues.
Anonymous of the second comment is right. It is pitiable that the Indian patent office is operating with only 70 examiners, our neighbour China has more than 2800 examiners and the number is expected to reach 5000 by 2010, close neighbour pakistan has recently recruited more examiners,even tiny malaysia has 70 examiners. At present Indian patent Examiners have unrealistic targets or monthly quotas. In India at present it is 10 new cases per month(FERs) and an infinite number of examined cases(amended cases) coming in after amendments by applicants.On an average the worldwide monthly target varies from 5-7. Our blog members & followers may be able to throw further light on the targets in other countries. This is in addition to the formal examination and opposition cases in which only examiners constitute the board members.It should be noted that in all other countries there is a separate division for scrutinizing the application for formal requirements. In India examiners are forced to do this clerical job too. With all these constraints how can we expect the output to have even a modicum of quality? If for some reason the top level management feels that immediate recruitment is not possible, it should take strong administrative & legal action to have applications examined by Controllers.
Transparency of the patent office would be the result of a holistic approach in which all such issues are taken care of. Instances involving visits by the CG Mr.Kurian to the patent office branches when he calls for meetings of all employees to seek their opinion stand out as examples. It is well known that examiners do not speak out their minds in front of controllers for the fear that they might be singled out for retribution. As the head, the CG should instinctively realize this and call for a separate meeting of such groups. A plausible solution would involve collecting honest opinions from the stake holders including all employees of the organization and reforming the set-up accordingly.
@anonymous of 2nd comment – I agree that the invention is in public domain but the objections raised by the examiner should not be in public domain until the grant/refusal of patent application. Though i am not sure but i don’t think so that such reprts are made public in ‘most’ countries (as you said) while the prosecution is still on. Will have to chec US patent database..This could lead to many problems, I can have my competitor filing for unnecessary pre-grant oppositions based on the citations of the Examiner, can lead to cozy dealings between the Examiner (who is not known until now) and the competitor etc etc. A secure link is whats the need of the hour.We also want comprehensive examination reports not mere ‘one liners’ which leave all for you to imagine and decipher.
Few questions that may pops up on such implementation
1.Will the communication be followed by a hard copy confirmation with the enclosure?
Presently, the Examination reports are issued as hard copies and the original documents including specification, forms and drawing sheets are enclosed with the Report. After implementation of email communication, what will happen to the enclosures, will it be followed by hard copy mail?
Many Examiners have the practice of marking the specification and claims and referring to them in their report. Eg. ‘ Claim 1 may be reworded to delete the referred terms’ or ‘The claims as marked are not clear with respect to the marked terms, clarify in this regard. These objections does not make sense without the specification/claim pages having said marking. If someone had the pleasure of going through the objections, they would be able to appreciate that often the marking are more explanatory than the report themselves which otherwise would be misinterpreted.
The application number is received only after filing the application, therefore during filing it is not possible to include the application number in the Form and Drawing sheets (as required by Indian Practice). The only chance the applicant has to include them is during filing a reply to the Examination Report. If the originals are not returned, the applicant is forced to file fresh forms and drawing sheets, which sometimes run into number pages, and that too in duplicate.
The circular also refers to Notices, which would include notice of opposition being sent by email. In such cases how will the patent office forward such notice (including cited documents) to the applicant?
Cont in next comment…
Patently Yours
Cont from earlier comment…
2. The Rules require the electronic transmission duly authenticated. Therefore the emails must be digitally signed before sending to applicant/agent to act as a legal document. This raises a few more questions on the technology front
Who will digitally sign the emails? Will all emails be signed by CGPDTM or Asst/Dept Controller or the Examiners?
Will all email be sent by a single email id or will each Examiners/Controllers send it through separate email ids?
IT knowledgeable person would understand that an email once digitally signed must be sent directly to the Agent/Applicant’s email. It is not possible to forward a digitally signed email to a dispatch for them to forward it with the same signature, unless, the dispach have a digital signature at their end. So does the Patent office have the infrastructure to support direct email from Examiners to Applicants? Or if the dispatch digitally signs it, how authenticated is it?
If the email is followed by hard copies, who keeps a track of them? The patent office procedure, does not provide any details on dispatch department
3. In the Zeenews report, referred above, FICCI’s Director General Amit Mitra was quoted as stating “Introduction of electronic correspondence is a boon for stakeholders as it will ease the task of patent prosecution in India, especially for applicants residing in foreign countries,”
This would be against the Act/Rules, since foreign applicants cannot apply for a patent without address of service in India. However this statement may be true in case an applicant provides an Indian address but has moved abroad after filing.
In such cases what about the enclosures? Will the as email be self sufficient or just act as a notice for something to come. If there is an agent on record, will the email be sent only to the agent or will the patent office send it also to applicant if requested?
4. The CGPDTM in his notice had asked all the agents and applicants who have not provided their email id to send them to the respective patent office. I pity the technical heads of each office and the personnel who would now receive a barrage of emails asking them to update ids to all applications already filed. How do they plan on updating thousands of applications with email id’s? The CGPDTM may have just stopped by asking the agents and proceeding with the future applications and not updating existing applications which would lead to a further workload on the already overloaded staffs.
Patently Yours
@nish154:
As far as USPTO and EPO are concerned examination reports are made available in public domain while the prosecution is still on. I do not have any idea about other jurisdictions.
Your apprehension is quite right given the way IPO works. This might lead to unnecessary pre-grant oppositions and may even lead to cozy dealings as you seem to suggest. But this should not be an excuse to prevent examination reports from being open to public while the prosecution is still on. I always had some doubts regarding the pre-grant opposition. I am not aware of any statistical study as to the success rate of pre-grant oppositions filed. In my view we can do away with pre-grant opposition and have a more objective procedure which I feel can answer your apprehensions too.
The two major differences between pre and post grant oppositions are:
“any person” can file a pre-grant opposition and the Act does not provide for any formal procedure. It is left to the controller to decide whether he should entertain such an opposition or not? I have no idea whether we can appeal controller’s decision of not entertaining a pre-grant opposition. Whereas post-grant opposition can only be filed by any “interested person” and there is a formal procedure of dealing with such an opposition. The grounds of opposition in both the cases are same.
I have found majority of the applications to be reading on some prior art or the other. Should I call this a “bad drafting” or a deliberate attempt by the drafter to mislead the examiner! Prima-facie I feel like opposing almost every application as filed. In my opinion the main objective of pre-grant opposition is to aid the patent office in effective examination of the application. This can be easily achieved by way of a mechanism which can allow any person to submit relevant prior art or any relevant document which might be crucial to patentability. Once the patent is granted one can easily determine the claim scope and take a decision whether to oppose such a grant or not.
As to the post-grant opposition, which can only be filed by any “interested person”, I suggest S. 25(2) suitably be amended to allow for opposition by “any person”.
I invite the opinion of spicyip readers.
I would like to thank the readers for the insightful comments.
With respect to the comment made by Patently Yours. The Public Notice which can be found on the website does not provide information regarding the detailed procedure that will be followed with respect to electronic notifications. The notice which was dated 19.06.2009 says that the system of electronic notifications will come into effect from the 1st of this month. So, there must be some notifications which have been sent out by the Patent Office. I would like to request readers, who have received such notifications (as patent agents or applicants) to throw more light on the issue.
@prakruthip
There is no detailed procedure issued on the working of the electronic communication.
The procedure I was referring to in my comment was the Patent Office procedure dated 1st July (available from the patent office website) providing details of department and their duty. This procedure does not have the role of the dispatch department let alone about Electronic dispatch.
Patently Yours