Transparent Kurian Illumines Again


In a development that has significant ramifications for the improvement of transparency in the Indian patent process, PH Kurian, the Controller General resurrected an old order mandating that all correspondence between a patent applicant and the office (during the course of prosecution) be made available to the public. The order reads thus:
“…after the publication of an application for a Patent u/s. ll(A), all the offices shall make available on the request of any person, the application on any form or otherwise on a plain paper, copies of all the letters/correspondence between the office and the applicant/agent or vice-versa along with the application and complete specification and provisional specification together with the drawings, if any, on payment of prescribed charges provided in the first schedule”.

Apparently, the old order had been issued by Chandrasekhar, the ex Controller in 2006, but had been largely forgotten. Which is why Kurian’s practice of opening up his administration to the public and putting up all his orders on the website for public viewing is an excellent practice.

We’re particularly pleased with this development, since many of the requests that we put forward in our public petition to the IPO are slowly bearing fruit. Specifically, we had requested that all prosecution history be made public. And that barring the confidential reports of examiners under section 144, every other document relating to the patent process ought to be made public. We even prepared a note outlining why such publishing of information would be perfectly legal under Indian law.

When I look back, I realise that SpicyIP did not have many good things to say about the Indian patent office, ever since we began blogging in 2005. However, PH Kurian’s appointment changed our perception..and indeed the perception of many an individual that had hitherto been watching the decay of the IPO with some concern. CH Unni brings out some of these aspects in his excellent interview with the IPO Chief.

A large part of why the Kurian administration appeals to us specifically is its sustained focus on transparency. For an increase in transparency will inevitably bring more skeletons out of the closet and engender more accountability. And is perhaps the cheapest way of achieving a more accountable and efficient administration.

Since his appointment, the Controller General has issued the following “public” orders to further transparency. Copies of these are available on the IPO website and I want to thank Prakruthi Gowda for painstakingly putting together this list:

Circular No.CG/GE/2009/171 dated 17.03.2009: The Circular banned the entry of retired officials of the IPO from visiting the IPO office and working as unauthorized agents.

Circular No.CG/GE/2009/282 dated 26.03.2009: This circular stated that all patent agents and lawyers would be issued identity cards with photographs. These identity cards were to be produced for the purposes of entering IPO premises.

Circular No.CG/PG/Circular/2009/223 dated 26.05.2009: The circular sought to prevent unauthorized and illegitimate persons from prosecuting applications in IP offices. The circular instructed officials to ensure the bona fides of the persons prosecuting.

Circular No.CG/PG/Circular/2009/30 dated 03.06.2009: This circular directs all controllers to issue “speaking” orders while rejecting pre-grant oppositions and consequently granting a patent.

Circular No.CG/PG/Circular/2009/158 dated 19.06.2009: The circular requires all Group A & B Officials of the Indian Patent Office to give a list of their close relatives (close relatives include father, mother, sister, brother, husband, wife, father-in-law, mother-in-law, brother-in-law, co-brother, sister-in-law and first cousins) who are Patent agents, Trademark agents or practicing IP lawyers. The circular stated that this was to ensure that such officers do not deal with their close relatives in any official matters directly.

Circular No.CG/PG/2009/179 dated 24.12.2009: The Circular requires all patentees and licensees to furnish information in Form 27 on the working of patents as prescribed under Section 146 of the Patents Act read with Rule 131 of the Patents Rules. The circular mandated submission of the information before 31st March 2010.

Circular No.CG/PG/Office order/2010/233 dated 12.01.2010: The order noted that the inspection of documents as per Section 11(A)(6)(b) of the Patents Act read with Rule 27 was restricted only to the complete specification, abstract and drawings as filed along with the application. Copies of the amended specification if any were not being allowed for inspection and copies were not allowed to be supplied to the public. This practice contravened the Patents Act and therefore had to be discarded.

This Circular therefore clarifies that the right procedure under Rule 27 is to provide the specification as on the date of a Rule 27 application and not the specification as filed along with the original patent application.

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.

3 comments.

  1. AvatarPatentwire

    Kudos to CG!!! A New Year gift by Mr. Kurian to Indian Patent regime!

    All of us were waiting for this development at IPO. It is indeed an commendable step by the Patent Office. In fact the IP fraternity should celebrate this day as “Transparency Day”!

    This step will definitely bring a huge and positive impact on patent proceedings system. Furthermore, each and every invention will enjoy its share of fair deal.

    Reply
  2. AvatarAnonymous

    Dear Samnad sir i am a big fan of yours and really efforts of spicy ip is visible but sir dont you think alongwith the Patent Office system the employees there too need some kind of energy drink.

    Reply
  3. AvatarAnonymous

    Dear patentwire!
    You are like a new born baby. you do not know what a bad name Kurian has got in the DIPP. I am from Ministry I know! Then why he has not been relieved yet to take the prestigious principal secretary post in Kerala when his ministry counterpart Bhaskar got relieved long back to take the post in AP.

    Reply

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