Could CSIR take the plea that it anyway acts in national interest and has no competitors in the patent game so to speak? Or would the perception of conflict exist, despite the construction of sophisticated walls? How much money does CSIR make out of this arrangement? Could that money have been used to hire and train more patent examiners?
I did a report for the EU TIDP program several years back where we noted the abysmal lack of quality databases available to our examiners. Has this been repaired? Or is the outsourcing plan a strategic move to tide over these deficiencies? Or despite all the critiques against the outsourcing move, is this the most practical way to redress our serious patent backlog issues? Can one argue that prior art searches don’t really constitute the “core” function of a patent office and can therefore be outsourced to a vendor that provides more competent service on this count?
Hopefully, some of our well informed readers can shed light on these complex issues. But in the meantime, permit me to let Soma Das of the Financial Express do the talking:
“The Indian patent office is making the Council of Scientific and Industrial Research (CSIR) an integral part of the patent application processing system, a move that many perceive could create a conflict of interest, as the CSIR itself is a major patent seeker. It is felt that other patent applicants might not be comfortable with the idea of CSIR having access to information furnished by them.
In a recent move, the patent office has started outsourcing a limited number of Indian patent applications to a CSIR wing, Unit of Research and Development of Information Products (URDIP) to prepare Search Reports (SRs) — a critical document that recommends whether an invention is patentable. The in-house of patent examiners would subsequently vet the SRs.
This is being implemented by the patent office after the department of industrial policy and promotion (DIPP) signed a memorandum of understanding with CSIR in this regard in August 2010. While sections of patent experts hint at a potential ‘conflict of interest’ inherent in the plan considering that CSIR itself is a patent filer, the patent office maintains that there would be no such breach as it would ensure that CSIR’s own patent applications wouldn’t be sent back to the government’s science research body for search scrutiny….
….While some other senior patent officials told FE that applicants shouldn’t be concerned about application processing, a few other stakeholders did express reservations that competitors may not like their application to be reviewed by CSIR. “In practice, a patent examiner or controller is not allowed to file patents as per the Patents Act. By the same logic, a filer should not be allowed to be a part of the grant process” an industry member said.
Some others take a middle view. “Expansion of patent office is long overdue. Outsourcing arrangements such as these appear more like stop gap arrangements. Personally, I would prefer that patent office should recruit and absorb these officials, even if it is on contractual basis. Our patent examiners and controllers are expected to work full time in their capacity which is not possible in tie ups such as these where, the official doing searches would be performing an additional resposibility. Also, the terms of this arrangement should be made public,” said Gopakumar Nair, patent attorney and founder, GN Associates.
IP expert Shamnad Basheer feels, “Outsourcing to CSIR may not necessarily be a bad thing but one must appreciate that notwithstanding the most sophisticated firewalls to keep the CSIR “search authority” separate and distinct from the CSIR “patentee” avatar, “conflict” is always a matter of perception.” He further adds, “Given the comparative lack of resources and expertise at the patent office, my personal preference would have been for a strategy that focused on ramping up the search skills of our own patent examiners”.
Sunita Sreedharan, CEO, SKS Law Associates said “Prima facie, an interested party should not be involved in conducting searches, which should be carried out in an impartial manner. However, it is advisable to see the terms of agreement between CSIR and DIPP before commenting on this arrangement. Considering that there is a huge backlog at the patent office which have to be addressed and that CSIR is a responsible statutory government agency, we expect such a step to unburden the patent examiners from conducting searches and focusing their energies on examination of the specifications as per the Patent Law….”