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….”
34 thoughts on “Outsourcing Indian Patent Searches to CSIR: Insourcing Conflict?”
Apropos your above post and the concurrent report of Soma Das in yesterday’s FE! I am somewhat dismayed on the tone of this post and Soma Das’s assertion that the Indian patent office is making CSIR an integral part of the patent application processing system which is somewhat in contradiction to your numerous other posts on various recent moves and initiatives of Indian Patent Office that I always found very objective and analytical that would encourage it making it efficient and more productive than before.
The running backlog of patent applications is not only unique to India but is quite universal now and all patent offices are reportedly struggling to bring down the backlog and pendency periods by adopting various means. The USPTO whose backlog currently runs over 700,000 at anytime boasts of successfully bringing down the pendency period of over 35 months a few years ago to around 24 months now. The magnitude of Indian problem is much smaller and yet requires adept handling within available means. We should, in fact, give kudos to Mr Kurian and DIPP in taking this step.
The examination of a patent application consists of i) assessment of patent application meeting the requirement of statutory requirements ii) criteria of patentability, i.e., being new, useful and non-obvious. This second part is no doubt quite crucial and critical that is based on the required prior art search. The Patent Office staff members have expertise in various technologies related to different inventions. This puts an increasing demand on recruiting more Patent Examiners as the number of patent applications keeps increasing with time. The Patent Office has already taken action to recruit a large number of Patent Examiners as reported in some of your earlier posts. Getting new recruits and training them till they are in the mainstream is never an easy job, particularly for Indian public agencies. Nonetheless, any satisfactory stop gap arrangement to lessen the severity of the problem should be welcomed and encouraged.
Speaking from scientific perspective, I could say that ‘prior-art search’ covering search of patent and non-patent databases is akin to ‘literature search’ that any scientist is used to in conducting all through his career to keep him abreast of new developments in his area of research. The ‘prior-art search’ is however conducted within the context of a patent application and in terms of the descriptive part of inventive steps and the claims made there to. Nevertheless, skill-sets and techniques required are much similar in both cases and often require a deep understanding of the technical concepts involved.
Although, I am not aware of any parallel anywhere, yet I see no conflict of interests as apprehended. URDIP is a competent outfit having adequate expertise in patent search and analysis. Patentable inventions originate in different constituent laboratories and are processed through another window of CSIR and are assigned to CSIR as per organizational policy. It is not likely that technical inputs of URDIP prior-art search can be influenced, particularly if the blind review process is adopted which generally is the norm in ‘peer review’ in scientific publications. While the reported outsourcing job quantum to URDIP is just about 5% of the overall workload the Patent Office currently handles.
Irrespective of whether the Patent Office does the prior-art search internally or externally through a vendor, it is the Patent Office that is responsible to makes its actions known to the applicant, carry through the process of prosecution that may entail amendment of claims, division of application and so on in which vendor can not have any role. Only Patent Office and its wisdom prevail.
Dr Rajendra Prasad
Dear Rajendra prasad
you have raised a valid point..The Prior-art search is akin to literature search.
But isn’t patent office supposed to search for the claims ?there lies the difference.taking forward your logic on outsourcing we can call for district court judges to carry out controllers duties and functions as prescribed?pendency will reduce further.
Dear Rajendra prasad
let me expand a bit. without writing or disclosing ” literature” Patent applicants seek “future literature” .Thats the reason why commercial patent database providers exist and continue to extract “intelligence” from patent documents!
I strongly raise my concern over IPO outsourcing its work to CSIR’s any laboratory. I myself have also worked at URDIP for a good duration. I do not wish to raise any question on the capability of URDIP but this activity is not appreciated.
IPO gets numerous patent applications from various inventors. There would be strong “conflict of interest” while making the state of art search as there may be various applicants who are CSIR’s competitors. Knowing CSIR as one of the patronized patentee of IPO, this recent move by the later is not taken. Though, IPO takes the “ultimate responsibility”, I find a risk at taking this step.
We have lots of well-qualified talent around which are looking for employment opportunities. IPO can hire those talents on “contract basis” (giving “consolidated salary”) and can get their work done till the patent examiners are placed on. Government surely can spend a couple of months on training these candidates and provide them the required infrastructure. What more is been required? An efficient computer, access to various paid and other patent and journals databases and security enabled working area.
Slightly off topic!
I have some reservations equating patent searches with other non-patent literature searches conducted by scientists, as advocated in some of the comments. Based upon my practical experience we cannot approach a patent database with a regular scientific mindset what you have while conducting searches on non-patent database. If you do so, you would most often end-up with not finding the relevant patent prior art.
Ideally what you need is a mix of ‘scientific’ plus ‘information science’ background in order for you to be an efficient searcher; an ‘information scientist’ must be your best bet. A scientist who worked in lab may often be trained to do patent searches, but most often, they wouldn’t be pleased doing this job. It would have been ideal if patent office had also notified for jobs of patent searchers with the above background, instead of just patent examiners. For the former, patent office would have saved themselves from rigorously training patent examiners to conduct prior art searches.
When someone who want to enter in the field of patent ask me a question what career options are available in this field, I give three options, each of which requires specialized skill sets!
Patent Searching – scientific plus information science background.
Patent Drafting & Prosecution – scientific plus knowledge of patent act & rules (patent agents and patent examiners fit here)
Patent litigation – scientific plus legal background (patent attorneys fit here)
Yes, I do have reservations about outsourcing this job outside of patent office.
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tks for all your comments. it turns out that the outsourcing idea may have come from this research report drafted by a DIPP employee in Japan:
Also one would wonder why IPO does not take help of any KPO in such a critical situation? There are various Organisations who provide impartial and professional services on reasonable rates. And if the patent office insists on a government entity for outsourcing then they may involve PFC of TIFAC and NIIPM in this matter and take their help after “amplifying” them accordingly.
do u have any critical info on pendency rate vis a vis the major patent offices and how pendency is affecting India.applicants were found to be in no hurry to get applications examined according to this http://bit.ly/fsvh3h
IPO’s journey from EU TIDP report to acheiving ISA status brings into picture the following.
From an abysmal lack of quality databases available to our examiners to acquiring WIPO accepted Prior art Search capability is really commendable .
Having got the skills i wonder what IPO gains by opting for outsourcing when most applications already come with search reports . BTW WIPO doesn’t allow outside agencies carrying out PCT searches .probably the different practices of abroad need to be studied deeper to evolve a holistic approach rather than cherry picking.
perhaps IPO can earn few dollars with a holistic approach and vision
Thank you for sharing a significant piece of information through this document.
Believe me, I very well understand the backlog rate at IPO. In fact, I have faced it. And top of all, its difficult to make the applicants(clients) understand when they ask us about why the applications are stagnant at patent office.
I understand that some steps should be taken immediately to clear the pending cases, but “lack of manpower” may not have arisen over the night, right? The IPO should have recruited at proper time considering the need in future. My only concern is the common interest should not be conflicted when there are various other ‘promising” options floating around to consider.
i am a former examiner during the time i worked we had no paid database to serch for now after having acquired paid database we dont have anything to serch for
nice to see that i could be of some use.
reg promising” options
whether we like it or not , we either have to live with the IPO or need to find promising means with due approval of legislative process.shortcuts /stop gap arrangements lead to unimaginable chaos leading to unwanted burden on society.just imagine traffic chaos we across due to lack of traffic cops.
Dear Anon 11:57-later one
I highly sympathize with what you say. Well, I guess we really do not have an option apart from living with IPO, do we? 🙂
Regarding promising options, yes, they are indeed there but i wonder if one has that “acumen” to find them. And about “due approval of legislative/administrative process”, one should avoid commenting on that. But since I cannot, I can only say that when there is a will, there is a way.
Please make sure that I have not talked about short cuts anywhere.
Once again, I thank you for providing an illustrative example of traffic chaos. Now I request you to imagine a situation where a cop has to deal with his own wife who has broken the traffic rule or not carrying the license, etc. Please keep the “highly disciplinarian and principled” cops away from this situation.
let any option(kpo’s /tifac/urdip/niipm) be explored. i am sure that only “legislative” process may produce a fair option because the issue a matter of statute.S74.after all the Section 3(d)was a result of such process which was hailed as constitutional though crude .
Its natural that every one wants to play a cop.
Indeed legislative process is a fair option but then it should perform all the functions “fairly”. It should not sound unfair to anyone.
Perhaps easy to play a cop but difficult to discharge the functions “rightfully” 🙂
Dear S and another anonymous IP expert,
I wish, I could continue reading your conversations and have another half an hour go off. I would like to tell, how much I enjoy reading this kind of conversations where both the parties really can not do anything or they simply do not have any authority, but like to express their ideas in public. I can see your frustrations regarding IPO, but let me tell you, its not regarding IPO. Its regarding the IPO being the integral part of Indian bureaucratic system. File RTI and ask, how the patent controller is appointed at IPO, or ask DIPP why there is a knowledge gap between a person governing DIPP, IPO and patent examiner? You would simply get a cold shoulder from these people. There were so many people who served as a controller general coming from IP background or scientific base. Mr. Kurian, current CG of IPO is one of few, who is also a science background person with deep experience of india bureaucratic system(he is IAS office for may be ages). And he is trying to improve the IPO system and reduce queue of patent applications. See where the problem lies, he is a IAS officer with almost as senior as joint secretary working under DIPP secretary with bunch of people who do no like to work under commerce ministry. As per as my knowledge digs down to the outsourcing issue, you simply can not avoid it given the current scenario. Even JPO is doing it. It is not a excuse but then, if somebody is trying to help you, you accept their help.
Suggestion to S, file RTI and find out how much money IPO makes in the whole process from patent filing to granting and maintaining? Another, why the patent filing rates are so low in india? Another, why patent examiners in india get paid so low (comparing EPO, USPTO, JPO, and others… not comparing country wise but PPP wise)
My simple point is, they are so many questions and problems regarding the whole system you just can not answer. If you are a patent attorney or patent agent, please try to help the system work rather than being so critical about everything and add-on pessimistic.
Another thing for all the patent attorneys and patent agents like me, just do not file the patent applications to check if it is really patentable or not as its the cheapest way to do it. How?? Go to any well-known KPO in Delhi, Mumbai, Pune, Banglore, Hyderabad (with all norms and security level) you will be charges minimum of 25-50 Man-Hours= $500-$1000 + service taxes. Now, if you want to do it with IPO, simply file it and ask for the examination all it would take is under 10,000. And you will have a good search report ready with you. This whole thing, increases the burden at patent office and then unthinkable options are processed.
Suggestions for DIPP secretary: patents are not ration cards so, not everyone gets them. Please read about them carefully.
Suggestions for patent office: please increase the filing fees so that no one just files the patent application to raise his ego/cheap searches (many prof. do that) and make stringent law for appointing patent agents. Also, have a suggestive fee structure for patent agents so only constructive and good drafters get the position of patent agents.
All readers: please ignore my english as I am really not a native english speaker. I am from east europe and a frequent visitor of india. (IP related).
to discharge the functions “rightfully” Standing commitee has suggested repealing S144 , IPO has started “Indian Patent Information Retrieval System”.not to leave we have the ever vigilant spicy ip and a vibrant 4th pillar of the democracy. Some rays of hope which you carry forward.if not all atleast u can ensure with your spirit.
all the best
I appreciate your concern towards us. And I am thankful to you for that.
Its true that we perhaps do not have any authority but we definitely like to discuss our ideas and views in public. There is no harm in registering our views, am I right? In fact that is how all of us grow.
I really wondered what exactly in our discussions made you enjoy but I am happy that it had at least some humor value to you.
We appreciate our CG and his efficiency and capability. Nobody is questioning about his views and activities. We have also witnessed a remarkable transparency at IPO since he took the charge. And I believe that significant changes take significant time to happen. We all are waiting for that to happen……optimistically
IPO is not a person but an organization run by many people. And as you rightly pointed out, it is a victim of bureaucracy.
The agenda of the discussion over here is only restricted to whether IPO should outsource the prior art search work to the third party or no and especially then when that party is itself a patronized patentee.
We really do not want to discuss the short comings of IPO with respect to any other aspect no matter they are related to each other.
Since you are well introduced to our patent office, I am sure you need not be told the difference between the working culture and administration at JPO and that at the IPO. So what JPO does, not necessary would suit to our climate.
I apologize if there is any kind of pessimism in our discussion which bothered you. But let me assure you that it may have been mere a critical opinion and not more than that.
Incidentally, I thank you for your suggestions for all of us.
Also please feel free to express yourself; even my country is not natively English 🙂
In context of the post, and in addition to the concerns of conflicts with URDIP, it is pertinent that it is believed that URDIP also undertakes assignments from private players for prior art searches. This would raise many eyebrows particularly when a public funded organization, on one hand seems to now act for IPO and on the other also aids the private players.
I do not see any problems with URDIP or any other CSIR institute handling the cases of private firms. It is basically, most of the goverment institutes take help, provide services to, take grants from, many national and international private player. I think, CSIR is very much a professional government organization with high level quality standards.
If that is the issue, then see the cases of many patent agents who are doing drafting and other supports to the competitor clients. If you check Chennai IPO or Kolkata IPO patent applications only 1 or 2 prominent players have provided services to all the competitor patentees. Even these patent agent firms do not have ISO certificates under security and confidentiality manner.
In other cases, in any outsourcing organization, say KPO it is very much the same scenario where they provide similar services to competitors in the same sector, e.g. CPA Global, Legasys etc.
I think, few people here are being too critical about the situation as they themselves could not procure the contract from IPO India.
Wherever you go, given growing task and business the only solution which can be affordable to any Govt. organization or private firm, is outsourcing to the specialist industry partner.
As you see in USA, most of the states are outsourcing the task to indian IT companies in that case you are very soft about the scenario and accepting the situation, as money flow is towards you people. e.g. many western clients give the drafting tasks to many indian KPOs or patent agents as they are affordable and a quick solution.
I think, people should grow up and think bit positively.
Thank you Anon 3:50. I hope you too improve the spirit of the discussion by sticking to the topic.
Well, I guess its easy to occasionally come and sit on the bank and guess the depth of a river. One should try to dive for that 🙂
Anyways, my concern is only that no conflict of interest arises. I do not have anything against URDIP. what it does to earn its bread and butter is absolutely their matter. But i would have been more happy if the task is given to a party who does not share the same interest area.
And not a bit, there is enough positivism required for growth. But equally a man should also learn to call a spade, a spade.
the point in question is can a
statutory function be performed by only by prescribed or not.should’nt it be decided by legislative wing of the state rather than by anyone else. my comment at 2:24 pm was made with as much open mind as possible!
and when legislature deems fit we can also demand that we be permitted to practice patent law in europe/us/japan etc or want to be EPO/uspto/jpo patent examiner being an Indian citizen and viceversa.
btw i wish you know the fundamental difference between IPO vis a vis USPTO/JPO which is very much relevant for this issue.
Shamnad: It is quite hilarious that two highly incomptent organizations IPO and CSIR are exploring opportunity of outsourcing between them. I prefer talking ground, hard-hitting reality.Most of the examiners and scientists working in these organizations are not even goood comprehending English and they are looking into tracking and analyzing high quality published scientific literature…laughable…Secondly it is not about searching literature but it is more about quality in searching the literature…search can be done any tom-dick-harry but quality can only be produced by experts and qualified professionals.
Be the change you want to see
@Anon (10:49): I am proud enough to say this that I AM A CHANGE.
it would have been really great if your comment brings in the change which you wanted.may i know how problem is going to be SOLVED .
@Anon (7:05): Though you sound like a typically parochial Indian rather adding constructive thought to the discussion you merely keep questioning and arguing for the sake of continuing discussion. At my level, I am rewriting the rules and inducing others associated with me to follow the CHANGE. If needed, at my level, despite hectic professional commitments I will volunteer myself to contribute in training and educating people (IPO, CSIR anywhere) and in building robust system without asking any cost. A reform is only possible when everyone at his/her own individual level become the part of CHANGE.
I feel sorry to observe that my comment triggered a wanton and de-spirited debate. To me the issue of ‘conflict of interest’ as apprehend by the learned Blogger appeared superfluous prompting me to describe my understanding with a technological perspective of the issue. Unfortunately, I am left no wiser than before with the reactions to my comment.
Let me share further:
1) The issue of ‘conflict of interest’ with URDIP/CSIR being in the play necessitates us to consider if the institution concerned can be defined as ‘interested party’ or ‘competitor’. The earlier term requires that it has a recognizable stake in any legal dispute with another party (the party whose application is subjected to prior art search) if the matter goes to court now or later. The term ‘competitor’ would require this to be seen as an entity which is a rival to another company in the same industry offering similar products or services. Clearly, despite being a formidable patent filer, CSIR is a competitor to few, if any. Thus, while CSIR can be regarded as ‘Applicant’, it can hardly be called an ‘interested party’ or a ‘competitor’. And URDIP is a constituent of CSIR for administrative purposes and have no direct link with technology developing centres and / or with centrally administered Patent unit responsible for patent filing. Jurisprudence would therefore demand that URDIP need not be regarded as an ‘Applicant’ under any circumstances even though all CSIR inventions tend to be filed for patents under the state ownership with CSIR as ‘Applicant’.
2) It may be realised that CSIR as a ‘Patent Applicant’ is not the same thing as any other ‘commercial entity’ or a business house. Patenting by the university systems and the public funded research organizations world over has different motives than those of their commercial counterparts. While the businesses are in the game of cut-throat competition which economists and policy planners deal with under ‘competition theory’, the university systems are encouraged to patent their inventions to remain relevant to the needs of industry and society at large and towards strengthening the national innovation system. In short, a body like CSIR can have few opportunities of direct competition with anyone in the market place and would rarely be found in patent troll or patent wars; on the contrary, patents held by them in fact attracts industry to cooperate for long term research for technology development. Here is a WIPO link on Academic Patenting for more information on this aspect.
3) India is neither the first country to go for outsourcing nor it is a major one to have gone on this route. Both US and Japan are known to have the problem of backlog going out of hands much earlier and at a much larger scale than we have here in India. Japan has gone ahead by outsourcing as much as 75% of its workload to another organisation, IPCC that it helped establish. The US on the other hand, according to one report by EPO, has unleashed several initiatives to ease the workload encompassing i) outsourcing to external firms, ii) accepting searches done by other national patent offices, and iii) encouraging inventors to submit searches as part of an application in exchange for a reduced fee. Besides, it also has a plan to recruit as many as 1000 new Patent Examiners every year for several years. It is reported that both China and Korea are also outsourcing prior art searches at significant level.
4) Here is a link to the speech by representative of Japanese Patent Attorneys Association (JPAA) describing how outsourcing works in Japan and at a gigantic scale ensuring adequate confidentiality. Fortunately, this is in English and fairly educative. We have no idea how the Indian arrangement has been put in place but there is no reason to doubt that Indian Patent Office can not take care of the obvious. We need real solutions for real problems, let our somatic apprehensions not stand before the imaginary problems.
Dr Rajendra Prasad
dear friend just as you cannot reveal beyond a point
so am i.for the first time you have informed how you are contributing and is worth appreciating.wish that you keep up your magnanimous offer at any cost .
regarding my contribution:the person who posted this post has been appreciative of my contribution in my field since long.though 360 degrees feedback is not there at my place of work ,i know how i will be rated if it were to be there.
my point is let us suggest something valid which professor shamnad can pickup.rather than “revealing” open secrets.my postings here have been fully open minded and at the same time were aimed at taking the issue forward in the best interest of the country.
some of the posts have been suggesting outsourcing to a kpo.fine. but who are these ppl ?ppl involved with kpo’s .doubt full if national interest will be served.
my fear is india the crown jewel among the patent offices in the world as has been described by peter drohos (The Global Governance of Knowledge: Patent Offices and Their Clients),should not be snatched by anyone.
@ Rajendra Prasad
CSIR is going to have commercial arm.http://bit.ly/edCiKk
to see that all is not hunky dory when ever we are venturing out
paras 3&4 of http://bit.ly/flwSR2
I notice that the hot links, I provided in my previous comment got snapped off. Please allow me to provide the relevant urls here:
Dr Rajendra Prasad
It is good understanding between CSIR, New Delhi and Patent Office Govt. prior art search can be outsourced and also patents can be referred to experts in the field of art of that subject to some conditions for their opinion. Only the problem is that whether CSIR has geared up to do this type of job as they are already dealing with about 400 to 600 fresh patent applications and already pending cases before Patent Examiners at various stages. Already PCT and US patent offices are out sourcing for prior art searching, any how the final decision is left with Patent Examiner, if required they can have second look at the prior art and it shall be faster than what is now happening. CSIR also can employ or take on contract some more and train them. it is an exercise of man power requirement and development for the future. There is nothing wrong in this type of agreements it is only mutual trust faith in each other without crossing their own domains.