Did the pre-Kurian Patent Office grant thousands of patents in violation of procedure?


For the last few years several of us have been astounded by the stunning rate of patent grants by the Indian Patent Offices. Just have a look at the figures: In 2006-07, the patent office granted just 1,911 patents with a staff of 150 examiners and 20 Asst. Controllers. By 2006-07 this climbed to whopping 7,539 patents with a staff of 133 Examiners & 33 Assistant Controllers. In 2008-09 the patent office proceeded to grant 16,061 patents with a reduced staff of 75 patent examiners & 70 Asst. Controllers. Image from here.

Now as per the Patents Act, 1970 only Controllers can grant patents, which effectively means 70 Controllers had to have granted 16,061 patents in 2008-09. The reality however is different. Controllers have not been the only persons granting patents since examiners too have been granting patents on a regular basis until the current Controller General P.H. Kurian took over office. The question is whether this is permissible under the law.

I. The scheme of examination and grant of patents under the Patent Act

On a joint reading of Sections 11A, 11B, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 25 and most importantly, Section 43 it is crystal clear that as per the Patents Act, 1970 patents can be granted only by the Controller.

The scheme of the Act is very simple. It involves a two-tiered system involving a Controller and an Examiner. The request for examination of the published patent application, under S. 11B can be made to only the Controller of Patents who then passes it on to the Examiner of Patents under S. 12, who then carries out a search for anticipation and obviousness under S. 13. The Examiner then submits his Report to the Controller of Patents who considers it and decides on whether or not to grant the patent under S. 14 or S. 15.

From the scheme of the Act it is quite clear that the Examiner is not supposed to have any interaction with the applicant. The advantage of such a setup is that when the Examiner does not have an interaction with the applicant, he or she is likely to be a lot more unbiased in preparing the examiner’s report and hopefully preventing a situation of ‘regulatory capture’.

II. The actual examination process in the Indian Patent Offices
Around six months ago I had blogged about a certain patent granted to Bharat Bhogilal Patel and how the patent had been granted by an examiner of the Mumbai Patent Office and not a Controller. At that time I was not sure as to how prevalent this practice was in other patent offices but given that the patent office has enabled online file inspections I have been able to access the file-wrapper details of other patents being granted by the Delhi and Chennai patent offices and it appears that these patent offices are following the same practices as the Mumbai Patent Office.

The following are the patents that I examined from the various patent offices:
(i) Patent Application No: 3355/DEL/1998 filed and granted to B Braun by the Delhi Patent Office; (available here)
(ii) Patent Application No: 1240/DELNP/2004 filed and granted to Ericcson by the Delhi Patent Office; (available here)
(iii) Patent Application No: IN/PCT/2002/02173/CHE filed and granted to Dr. Wobbens by the Chennai Patent Office; (available here)
(iv) Patent Application No: 161/MAS/2002 filed and granted to Ramkumar by the Chennai Patent Office; (available here)
(v) Patent Application No: 611/MUM/1998 filed and granted to Bharat Bhogilal Patel by the Mumbai Patent Office; (available here)
(vi) Patent Application No: 649/MUM/2002 filed and granted to Bajaj Auto Ltd. (available here)

Unfortunately the Kolkata patent office is not uploading its correspondence with patentees and I’m unable to confirm the practice in the Kolkata patent office.

On a review of all the correspondence for all of the above patents it is apparent that the Examiner has been in direct contact with the applicant and it is the examiner who has signed all correspondence with the patentee ‘on behalf of the Asst. Controller/Controller’. In effect this means that the Controller is delegated his tasks to the Examiner. This practice of the Examiner corresponding with the patent applicant begins at the stage of the First-Examination Reports (FERs) issued under Rule 24 of the Patent Rules, 2003. Although the rules are silent on which official is required to issue the FER it is quite obvious from a reading of the Act that these FERs can be issued only by the Controller. The Examiner’s only job is to prepare the Examination Report under Section 13 and place it before the Controller.
Included in this correspondence reviewed for the above patent, is a letter signed by the Examiner intimating the applicant of the decision to grant a patent. As per Justice Murlidhar’s judgment in the case of Dr. Snehlata v. Union of India, a patent is considered to have been granted on the day the letter of intimation of grant is dispatched. For all practical purposes therefore if a person is reviewing the above file wrappers it would appear that only Examiners are examining and granting patent applications. If in case Controllers are granting patents, the file has to reflect it through their signatures. It is apparent from the above files that the only the examiners are signing all correspondence. I have heard from some sources that the Examiner actually places the file for approval before the Controller and that in the ‘file notings’ the Controller approves and requires the Examiner to send out the letter. Now, I’ve never ever seen any of these ‘file-notings’ and can therefore not confirm this practice. The more troubling question however is why aren’t Controllers taking responsibility for their decisions by signing the correspondence with patent applicants?

III. Can such patents granted by Examiners be set aside by a writ court?
Yes, most certainly. The argument that would run against the grant of such patents would be quite simple and would be two-fold.

(a) The main question of law involved is whether Controllers can further delegate to Examiners, the powers that have been delegated to them by the Controller General under Section 73 of the Patents Act, 1970.

A fundamental maxim of administrative law is delegates non potest delegare. This basically means ‘one to whom power is delegated, cannot himself further delegate that power’. There are several Supreme Court precedents upholding this very fundamental principle.

In the leading case of Sahni Silk Mills (P) Ltd. And Anr. vs Employees’ State Insurance Corporation JT 1994 (5) SC 11, the Supreme Court, in pertinent part held the following:

By now it is almost settled that the legislature can permit any statutory authority to delegate its power to any other authority, of course, after the policy has been indicated in the statute itself within the framework of which such delegatee is to exercise the power. The real problem or the controversy arises when there is a sub-delegation. It is said that when Parliament has specifically appointed authority to discharge a function, it cannot be readily presumed that it had intended that its delegate should be free to empower another person or body to act in its place.

It is therefore implied that while delegation of powers under Section 73 by the Controller General of Patents is valid, the same cannot be further delegated by the designated controller to the examiner. This basically means that Examiners cannot sign off on correspondence ‘on behalf of the Controller’.

(b) Examiner corresponding with the Patent Applicant in violation of statutory scheme: As already explained above the scheme of the Act is clear, the examiner is not supposed to be corresponding with the patent applicant. This has clearly been violated by the patent office on multiple occasions.

Patents which have not been granted as per the law are bound to be set aside by a writ court with orders that the Patent Office comply with the provisions of the statute while re-examining the patent. A useful precedent in this regards is the judgment of the Division Bench of the Madras High Court in the case of Indian Network for People living with AIDS/HIV v. Union of India, W.P. No. 24904 of 2008. In this case the Madras High Court had set aside the grant of the patent. In pertinent part it stated:

50. Therefore, when monopoly right of patent is granted in favour of the fourth respondent ignoring the aforesaid procedure, it is clear that it has been granted with some incurable defects in the procedure namely, by non-compliance with the provisions of statute and statutory rule. Such grant is inherently defective, since grant here is grant of right in rem. The prejudice in this case has been pleaded, as stated herein above, and has not been denied in the counter filed by the fourth respondent. Therefore, the decision in Harendra Arora does not help the case of the fourth respondent in any way.

51. There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable.

Since in all of the above cases it is obvious that the examiner and not the Controller has granted the patent it is quite likely that any writ court would set aside all of the above patents with directions that they patent office re-examine all such patents as per the procedure established by law. I’ve heard that this practice of Examiners signing on behalf of Controllers was stopped by the present Controller General Mr. P.H. Kurian after he took office.

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

14 comments.

  1. Anonymous

    Dear Prashant Reddy,

    Is this article written by you? since i can find cut and paste sections showing it is not continuous. Any way started with increase in number of cases and ended with procedure irregularity. i really could not understand what actually you want to say the IP readers. i had not expected an article like this from you.

    Reply
  2. Anonymous

    Immensely glad to see atleast one article bringing out the correct number of examiners(i.e 75).As for the “number game” going on in the Patent office, its all about the RFD or Results Framework Document(available on http://www.ipindia.nic.in/ dated 1 April, 2011) which has fixed a certain target.Now the collective target as per RFD has been decreased and individual target for Examiners has been increased. This obviously means that the collective target would be exceeded thereby putting the Office in good books. Earlier the monthly target for Examiners was 10 applications per month. Now it has been increased to 16 applications p.m. Even this target is fixed only as “a monthly minimum output” to be “graded as good” for the annual confidential report grading.Examiners are expected to achieve an output above the average grading.This has led to Examiners in Delhi patent office and elsewhere competing with each other to show “above average output”. An examiner in Delhi has supposedly cleared 50 applications in a month. Against all logic, the latest order even warns that after appointment of newly recruited Examiners, the targets would be increased further. The biggest irony is that inspite of the “transparency drive”, such orders related to increase in monthly targets never appear on the official website. Could it be due to fear of criticism and guilt that Indian examiners are forced to show abnormal output not seen in any other Patent Office in the world? This should also be viewed in light of the order of the Hon. Madras High Court in Dr.Vinitha Ponnukutty vs The Secretary To Government Of India. In reply to a query from the Law Ministry regarding this case, the CGPDTM had replied that Examiners could be expected to give an output of only 10-12 applications(FERs) per month. Hope someone is kind enough to bring out the truth using RTI.

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  3. Aastha

    How is this article NOT continuous? I think it made perfect sense.

    Also, delegation of work is a common sight in all our government offices, but to do it officially is a different thing altogether.
    However, if all these patent grants are re-examined, then it will amount to unnecessary hardship to the grantees, whose patents will be taken away for no fault of theirs.

    Reply
  4. Anonymous

    Hi Prashant

    Do you have the Patent Certificate or Letters Patent Document for the cases quoted by you as example.

    If not it is worth while to have a look.
    FYI ALL LPD are signed by the Controller General of Patents and not by Examiners. The Legal right or monopoly is granted only by CG.

    Reply
  5. Anonymous

    BTW, a little birdie tells us that PH Kurian is leaving the Patent Office and returning to his home state before self-inflicting his career(ACR) with any more damage. Lets wait and watch how the whole system tumbles down like a pack of cards after his exit.

    Reply
  6. Anonymous

    With CG internal order of 16 new cases per month and 16 RQ disposal per month, total cases per examiner per month comes to about 45 (20 new + 25 Amended cases (atleast) to be done to achieve 15 RQ disposals) for fair grade only. With minimum of 1:3 AC to examiner ratio then AC need to dispose of about minimum of 135 cases (45*3) per month in addition to other essential tasks of Hearings, Post grant Opposition, Pre-grant opposition cases and miscellaneous work all these in just about 22 working days available in a month. On an average just about 15 to 30 minutes time at AC to dispose of an application on his table which is not reasonable time just read a complete specification itself once. Situation is just Race against time for Numbers rather than Quality at PO.

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  7. Anonymous

    Dear Anonymous @ 10.09 AM

    Please hold your horses…….this blog is not meant for such stuff.

    “” 16,061 patents with a reduced staff of 75 patent examiners “”

    means approx 4 patents per week (5 days) per examiner (that too if he has not availed any leave)……

    no wonder why examination lack quality…….

    Reply
  8. Anonymous

    Anonymous @ 3:14pm is right. Controllers are overloaded now. We need more Controllers in view of increased work pressure.

    Reply
  9. Anonymous

    Anonymous said

    ALL PATENTS ARE GRANTED BY CONTROLLERS ONLY.THE AGE OLD PRATICE IS THAT THE EXAMINERS SIGN THE LETTER ON BEHALF OF THE CONTROLLER.THE GRANT OF PATENT IS APPROVED BY THE CONTROLLER ON THE NOTE SHEET.BASED ON THAT THE EXAMINER SIGNS THE LETTER.YOUR STATEMENT THAT EXAMINERS ARE GRANTING PATENT IS TOTALLY INCORRECT.

    Reply
  10. Anonymous

    why dont you focus on something more discussion worthy than looking at things like who is signing what letters and so on? Such posts should not be on any blog whatsoever….Let us read thought provoking posts please…

    Reply
  11. Kshitij Malhotra

    I do not find force in any of the contentions raised in the article. The principle of “delegates non potest delegare” on which the central argument is based has been wrongly applied. The principle has been portrayed to be absolute. However, it is not. The principle “actually” allows sub-delegation in the case where legislation has explicitly allowed for the same. This principle has been established in In Barium Chemicals Ltd. v. Company Law Board (1967 AIR 295, 1966 SCR 311), and correctly applied in the cited Sahni Silk Mills case. The cited portion in the In Barium Chemicals case is as follows:

    “Bearing in mind that the maxim delegatus non protest delegate sets out what is merely a rule of construction, sub-delegation can be sustained if permitted by express provision or by necessary implication.”

    Therefore, my first point is that sub-delegation prima facie is not invalid, only sub-delegation which goes contrary to the intended scope determined by the legislature is.

    Section 73 as cited by the author clearly allows such sub-delegation. Section 73 (2) and the actual practices followed at the patent office establish a two tier system at the patent office, with examiners forming the first tier, and Controller General in a supervisory role. Therefore, the three tier system of Examiners, Controllers delegating their powers to the examiners and Controller General delegating his power to the Controllers, seems to be contrary to the statutory scheme of the act. Section 73 (3) reinforces this contention.

    Section 73 (3) states: Subject to the provisions of this Act, the officers appointed under sub- section (2) shall discharge under the superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time, by general or special order in writing, authorise them to discharge.

    The term controller here means the Controller as defined in 73 (1), which refers to the Controller General, and not the Asst/ Deputy Controller, who are holders of mere administrative posts and not statutory posts.

    Moreover, the Indian Network case cited by the learned author in his support was decided on different facts and circumstances. The case was argued on totally different facts and circumstances (non-compliance of the procedure of third party pre-grant opposition) by the patent office, which is totally different from the facts and circumstances that relate to malpractices followed inside office.

    Even if the arguments mentioned above fail, and I do not believe the court will decide against the patentees. The administrative law principles cited by the learned author in principle, also include few other principles which are worth mentioning. The principle of estoppels, which have been be reaffirmed again and again by courts in this country (see Express Newspaper V. UOI and Lotus Hotels case), and balance of convenience stand stead in favour of patentee.
    Just a polite note in the end. The learned author has been blogging again and again on this issue on grounds that are presumptive and tailor made to suit his arguments.

    As a well followed IP blog, I believe the blog has the responsibility to prevent publishing of such posts that disseminates misinformation regarding a serious issue of validity of granted patents.

    Looking forward to the author’s comments.

    Kshitij Malhotra

    Reply
  12. Prashant Reddy

    Kshitij – I appreciate criticism and am open to opposite viewpoints but don’t you dare accuse me of spreading ‘misinformation’. Just because it is not your point of view does not mean it is ‘misinformation’.

    You send in any more comments like this and I will ensure that they are blocked.

    As for your points, I’ve dealt with them below:

    1. I never said sub-delegation was ‘invalid’. The excerpt from the Sahni judgment which I have quoted makes it very clear that sub-delegation is allowed, provided that the legislation clearly allows it. The quote provided by you from the Barium Chemicals case also clarifies that ‘sub-delegation’ is the exception NOT the rule. So what you’re saying is not really anything different from what I’ve already stated.

    2. Section 73 does not allow for sub-delegation. Your conclusion stating the same is completely wrong. It allows for only delegation. There is a difference between the two. ‘Sub-delegation’ refers to the practice of where a person to whom powers have been delegated further delegates these powers. In the context of Section 73 it means that the Controller General can delegate his powers to examiners (who after delegation through an Office Order are referred to as either ‘Asst. Controllers or Deputy Controllers’). However when Asst. Controllers further delegate these powers to examiners the practice is referred to as ‘sub-delegation’. This is the difference between ‘delegation’ & ‘sub-delegation’. My post focussed on the legality of ‘sub-delegation’ not ‘delegation’.

    3. Your point stating “Section 73 (2) and the actual practices followed at the patent office establish a two tier system at the patent office, with examiners forming the first tier, and Controller General in a supervisory role.” fails to take into account the definition of ‘Controller’ in Section 2(2) of the Patent Act which clarifies in adequate measure that the term ‘Controller’ as used in Section 12, 14, 15 etc. means the Controller to whom powers have been delegated in pursuance of Section 73. The two-tier mechanism of the Patent Act does not require the Controller General to exercise any supervision over the grant of patents.

    4. The Valcyte case although decided on different grounds makes it very clear that if statutory procedure is not followed a patent will be set aside. That is the ratio of the case and is definitely applicable to any other case where a petitioner can prove that statutory procedure was not followed. Just because it was on different facts does not mean that the case does not have any persuasive value.

    5. Your points regarding the principle of ‘estoppel’ and its application in the Express Papers & Lotus Hotels cases, are wholly misconceived. Both cases did not deal with the exercise of statutory powers. Atleast read the cases before you cite them. Everybody knows that the principle of ‘promissory estoppel’ is not applicable in cases involving the discharge of statutory powers. Going by your logic all illegal actions of the patent office will be immune under the ‘estoppel’ principle. That’s ridiculous.

    6. And ‘balance of convenience’??? Seriously? How does that even work over here? Its more convenient for the government to get away with its mistakes – hence the Courts should allow it?

    Prashant

    Reply
  13. Anonymous

    Wholeheartedly agree with Prashant on his observation regarding Section 73. Since the Controller General can not obviously supervise the work of all his Examiners, he has delegated the power of supervision to some Examiners(who are now called Assistant Controllers or Deputy Controllers). These Controllers do not have any power except that which has been delegated to them by the Controller General. Now, how can they further delegate(sub-delegate) some thing, which is not theirs in the first place, to examiners?
    In addition to ‘supervision’, Section 14 of the Patent Act also says that the Controller shall communicate a ‘gist’ of the report prepared by the Examiner to the Applicant. But what happens in reality is that the Assistant Controllers merely forward the Examiners’ report verbatim to the Applicant let alone preparing a gist of it. This leads to doubts as to whether such a position which incurs exchequer’s money and does not create any value addition is required in the first place at all.Now if the law regarding preparation of a ‘gist’ were implemented in the first place, would that function be sub-delegated to an Examiner?. It would be funny to have Examiners prepare both an examination report and also a gist of the report.

    Reply

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