Our patent office recently issued a circular relating to examination of patent applications and consideration of examiner’s report by the Controllers. This circular provides an insight into the current process of examination of a patent application and also provides concrete steps to reduce the delay (at the patent office) in examination. In my opinion, this is a very welcome step and long overdue. PS: We had, in one of our previous post provided suggestions for improving the working of the patent office and we are happy to note that the circular incorporates a few of those suggestions including the one for providing a detailed order with reasons for rejections/acceptance.
The circular provides an instance of undue delay: “..[O]fficers acting as Controllers are unduly spending considerable time in reinvestigating the report of the Examiner and at times over-rule the opinion of the Examiner without recording sufficient reasons for such over-ruling in the file.”
A summary of standing instructions issued for examination in the circular is provided below:
i. Classification of patent applications according to subject matter group at the time of receipt of application.
ii. Determination of priority date on a claim basis (rather than entire application).
iii. Responsibilities of Examiner:
- To conduct comprehensive investigation of an application and prepare a report under section 12;
- Report to quote relevant pieces of prior art effecting patentability of a claim and provide an extract thereof. No frivolous objections;
- To conduct an inter-office search covering all four patent offices;
- To raise objections rather than comment on missing forms.
- The Examiner’s report will: Be a permanent part of a file’s note sheet and non-editable at the Controller’s end; Include a draft summary/gist of objections-this gist editable at Controller’s end; Include any amendments to the complete specification;
- Examiner to comply with these instruction to submit the report to the Controller.
iv. Responsibilities of the Controller:
- To consider the Examiner’s report on a prima facie assumption as exhaustive;
- Add to the gist if in his opinion Examiner has missed a major point on patentability;
- Overrule Examiner-but need to record reasons for the same in note sheet;
- Conduct hearings on the application: Examiner may be present and sign the note sheet; Controller to record minutes of the what transpired in the meeting in the note sheet; Responsibility of rejecting/accepting an application lies with Controller;
- In case Controller refuses an application, it will be noted in the note sheet and a reasoned order of refusal to follow within reasonable time;
- Controller solely responsible for petitions under rules 137, and 138; Forms 4, 6, and 8, and form 13. (See details of the rules and forms in the patent office manual).
The fact is that most Controllers are not willing to implement the order saying that it is not in accordance with the Act. They however would like to selectively implement portions of the circular, like the portion which says that examiner “may” be present during hearings. This “may” has been interpreted as “should” and examiners are now compelled to attend hearings thereby increasing their already huge workload.Controllers are waiting for P.H.Kurien to leave so that this order might be rescinded by some one favourable to Controllers.
Elaborating on Rajiv’s findings: After a hearing, the controller has to take a decision on the spot. He/She may consult the examiner(if present).This is a welcome move as Controllers have been known to keep such cases pending for years on end after hearing. In most cases such cases would go “missing”.
If the Examiner is present during hearing, he/she shall sign on the note-sheet. It is to be noted that this signature is intended to mark the presence/attendance of the Examiner only and not his/her agreement to the Controllers’ decision.This is also another welcome move as earlier, Controllers would refer an application back to Examiners after a hearing and force them to grant it. Now it is clear that grant/refusal after hearing rests only with Controllers. If the controller refuses the appln, a reasoned order has to follow within a reasonable period(one month).
The CG was fed up with mediating issues between examiners and controllers where controllers would revert the application numerous times for petty reasons. Such shuttling of applns to and fro results in a criminal waste of time apart from mental harassment of examiners.This could be the reason why the order says that if controller has any problems with examiners’ report he/she may add, delete or overrule the examiners objection instead of sending it back and wasting time.
An important point which has been clarified is that there is no need for a second examination report. We have been used to seeing second, third and even fourth examination reports of less than serious objections being transmitted by the patent office earlier. The Applicants/Agents would be clueless about meeting these objections and would say so in their replies. Magically after the last date, all objections would be waived off and the application granted.Hopefully this order would put an end to such communication which are a huge drag on time and resources of all stakeholders.A safe conclusion about Circular number 4 would be that it is more applicant friendly and tries to remove typical bureaucratic hurdles in the Patent Office.
@ anon 3:16
cg’s circular is very clear ,and the ball is now in your court.
It has been seen that CG’s circulars are not followed by his own staff. Please see how many opposition cases in trade marks were heard before 31st March, 2010 by the officers and there was a notice issued by CG asking the hearing officers to dispose off he case where the hearing has been held prior to 31st March, 2010 and the orders to be passed latest by 31st March, 2010.
CG had issued a public notice stating that the time for filing of the petition for renewals was extended to 31st March, 2011 from 30th Nov., 2010 and further sated that the petitions which were filed by 30th November, 2010 would be disposed off by 31st March, 2011. How many have been disposed off? There are several petitions where even the notice has not been issued even till October, 2011 what to speak of the disposal. It may be that the office does not require the notice to be issued as the papers filed by the applicant are complete. But then what has been done in those cases?
Then coming to the point that the CG has issued some circulars which are against the law. See this: CG had issued a circular that if the mark is already registered or pending then the subsequent application will be refused and in case it is not refused CG will take departmental action against the officer accepting the said application. By this circular, the provisions of Section 12, 33 and 34 have been given a go by.
Now coming to IPAB. It has been learnt that IPAB is putting cost on litigants for allowing time for filing of counter statements and replies to counter statements. This is apart from the prescribed fee in form 3. The cost which is being imposed is anything between Rs15000/- and Rs25000/-. This thing is never heard of that a quasi judicial authority imposing cost to be paid to the said quasi judicial authority itself apart from the prescribed fee under the rules.
From above it seems that the bureaucrats and quasi judicial authorities have become law unto themselves. They are above the codified law and the litigants mute spectators.
What Anonymous @ 4:26 has said is entirely true.More so in the patent office. The CG’s circulars are toothless. None seem to be followed. Its making a mockery of the whole system.When agents ask controllers about the circulars they get this reply “CGs come and go but we controllers remain here for ever, Whom do you want to obey?”. It seems that Cg himself has realized he has to work with his hands tied behind his back, that could be the reason for his hasty retreat.
these additional points are worth mentioning
1.controller to decide on the case during hearing( relieving anxiety to applicant about further hearing/examination)
2.proposes quality audit .