The genesis of SpicyIP in 2005 had strong roots in the fervent desire to weed out corruption at Indian IP offices, by interalia, fostering greater levels of transparency. While we’ve witnessed some modest success along the way, it really falls several notches short of what we initially set out to do. All of us have day jobs/preoccupations that cast serious limitations on the time that we have at our disposal, but that is no excuse.All of this is to provide some background for a recent article in the latest issue of the Managing Intellectual Property (MIP), where I reflect on the various transparency initiatives over the years and its overall impact. The full text of the article is reproduced below.
My gratitude to Shan Kohli, a trainee solicitor at a leading London law firm for helping me list out the key transparency initiatives in a table that was annexed to the published article.
THE BENEFITS OF A SUCCESSFUL CRUSADE
The clarion call for transparency in Indian intellectual property blew forth from the bugle of an unknown blog several years ago. Today, the transparency mission has some of the most committed crusaders, ranging from IP practitioners to civil society activists to government officials. Indeed, the past few years have witnessed a surge in IP information publicly available in India, information that took a sizeable amount of time and money to procure in previous years.
A lot of this had to with the initiatives ushered in by PH Kurian, a zealous controller general who blazed the patent office with bold reforms, upsetting the powers that be. Unfortunately, his blaze was rather meteoric and he was edged out before he could complete his term in office. Despite the obvious refrain that he was returning to his home state upon the request of the state government, most in the IP community knew better. A lamentable loss for the Indian IP community, but one hopes that the spirit of his reformist movement finds continuity in his successor.
The transparency trajectory of the Indian patent office is outlined in the table opposite. As one can see, initiatives have been increasing at a laudable rate over the last few years, bringing more matters into public purview. All of this is likely to have a long-term impact on the Indian IP ecosystem.
Cracking Corruption
Transparency is one of the most effective anti-corruption tools. A sentiment of particular interest to a country where anti-corruption has become the fashion of the season. Egged on by the sacrifice of an aged Gandhian who threatened to fast unto death until the government passed a meaningful anti-corruption law, many have awakened from their slumber to hitch a ride with the anti corruption bandwagon. If one were to rate Indian government offices on a corruption index, my guess is that the Indian IP offices would rank quite high.
About a year back, I was asked by a top Indian Foreign Service (IFS) officer at the UN: Is our IP office still as corrupt as it used to be? More recently, in March this year India’s Central Bureau of Investigation arrested ND Kasturi, the deputy registrar of trade marks in Chennai for possessing assets well in excess of her earnings. Files from the IP offices have routinely gone missing. In a recent case, the government admitted to losing 44,000 trade mark files.
Although corruption is a complex institutional problem requiring a multi-pronged solution, one way to redress this malaise is by simply being more transparent. As Justice Brandeis of the US Supreme Court rightly remarked: “Sunlight is the best disinfectant”.
More Power to the IP owner
Apart from its potential to reduce corruption, an increase in transparency fosters several other benefits. For one, all IP stakeholders including the public at large benefit from free information that they can readily access. Indeed, the very rationale for a patent grant is that the informational content is readily available to study and benefit from.
Further, IP applicants can now track their cases by browsing the Indian Patent Office (IPO) database without relying on attorneys who were prone to charging fees for such information in the past. The present IPO database permits clients to track the entire progress of their application, including the presence or otherwise of any oppositions. In this way, a more transparent IP information system forces attorneys to be more accountable to their clients.
Fostering Meritocracy in the Profession
In the past, attorneys would charge a heavy sum for any IP information, even for something as simple as whether or not a patent was granted. In fact, the reputation of an attorney turned largely on how quickly and how well he or she could procure information that the public did not have access to. The good attorneys were those with the contacts.With increased transparency and availability of information, however, that breed is slowly dying. Replacing them is an attorney that is no longer concerned about the covert nuances of information procurement; rather, he is one that is adept at analysing raw IP information and providing creative advice and strategy to clients.
One might state that an increase in transparency converts almost immediately to a rise in meritocracy, fostering IP attorneys who pit their wits against each other in a game that is as fair as it gets. It also means that access to the upper echelons of the profession is not reserved for those that have fathers or godfathers in it, but is open to anyone with a half-decent brain, willing to slug it out.
Of course “contacts” will continue to remain important, but they will hopefully be relegated to secondary status.
The Rise of IP Analytics
An increase in information and raw IP data has also spurred a new kind of IP analytics service, where companies cleverly analyse patent information and provide competitive intelligence. Not only does this throw up employment opportunities, it also helps innovators acquire more sophisticated information on the patent and innovation landscape.
A Favourable Legal Framework
At this juncture, it is pertinent to note that the transparency battle in India was aided in large part by the fact that the IP statutes provide a robust enabling scheme for the provision of IP information. One might argue that the Indian patent statute is one of the widest in terms of the range of information that it calls for from each IP applicant. Section 8 of the Indian Patents Act stipulates that patentees have to submit information pertaining to their foreign filings in respect of the same invention.
Section 146 (read with Form 27) mandates that patentees submit yearly information on how their patents have been worked – number of products sold and value of sales, and whether the local demand has been adequately met. Recently online blog SpicyIP (of which I am part) highlighted the fact that several patentees were not complying with Form 27 filing requirements.
We were aided in this investigative task by invoking the Right to Information Act, under which the government is to mandatorily disclose information to the public. Born essentially out of civil society activism, the RTI Act aims to make the government more accountable and reduce corruption. Its statement of objectives reads: “Whereas democracy requires an informed citizenry and transparency of information which are vital to its functioning and also to contain corruption and to hold Governments and their instrumentalities accountable to the governed.”
The Act has been deployed quite effectively to force the disclosure of vast tracts of IP information, and has, within a short span of time, helped created a more transparent landscape for IP information.
Lingering Problems
However, all is not rosy. Despite the theoretical provision of information, there is much to be said for the accuracy of information obtained. Several errors permeate each of the IP databases that the public can access.
Recently, in TenXC wireless v Andrew Comm Scope, a party filed a patent certificate downloaded from the IPO website to further its case in a court of law only to find that the certificate itself was the wrong one. It was not the final set of claims as issued by the Patent Office, but a prior set.
Conclusion
Despite the above shortcomings, an increase in transparency is a boon to all IP stakeholders. To IP users, it means lower costs, more informed decision-making and greater accountability from attorneys. To IP attorneys, it translates to a rise in meritocracy and an ability to serve clients without placating government officials. To the public at large, it means a more accountable government agency and a healthier democracy.
The battle for transparency has been a long, but fulfilling one. Its success owes in large part to the active partnership of a vibrant media, courageous attorneys, well informed IP users, fiercely honest government officials and a progressive judiciary.
One can only hope that this partnership is leveraged in the days to come to address the various other challenges plaguing the Indian IP system.
Annexure: Key Transparency Initiatives of the IPO
May 19 2008:
Basic information relating to patent applications (bibliography, abstract, specification and drawings) are made available through the patent office website. Copies of granted patents, controller’s decisions and published patent applications are also made available.
December 24 2009:
Circular CG/PG/2009/179 is issued, which 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 by March 31 2010.
January 12 2010:
Circular CG/PG/Office order/2010/233 is issued stipulating that the latest updated patent specifications will be available (under Rule 27 of the Patent Rules) for inspection and copies of the same will be provided to the public. This circular 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. Until the circular was passed, the usual practice of the patent office, under Rule 27, was to provide the public with only a copy of the patent specification, as filed, even if it had been changed.
March 7 2010:
The Indian Patent Office revamps its Indian Patent Information Retrieval System (IPIRS) (now known as IPAIRS) in order to provide an extremely useful search feature on the status of pending applications.April 16 2010 Patent office issues an order stating that all correspondence between a patent applicant and the patent office (during the course of prosecution) must be made available to the public.
June 23 2010:
Intellectual Property Office makes available to the public complete details relating to Trademark Registry. This includes access to pending trade mark applications, registered trade marks including the prosecution history, examination report, copy of the application, e-register of trade marks, copy of the trade mark certificate and opposition details.June 24 2010 Details of prosecution history, complete specification and examination reports of published patent application and all details including e-register in case of granted patents are published on the patent office website.
January 12 2011:
Trademark Registry makes registered trade marks freely searchable through an online database.
April 18 2011:
The Patent Office begins hosting scanned copies of entire patent files on its IPAIRS (patent office information database) system. The scanned copies include all correspondence between the Office and the patentee, all forms, abstracts and specifications filed by the patentee with the Office.
Shamnad,
Our own case goes beyond the TenXC ‘joke’.
We procured a certified copy of a patent from the Patent Office (the ‘proper’ ribbon + thappa wala version).
We filed the opposition based on the claims in this set.
Guess what, the party comes back and says, ‘your opposition is malafide as it is not based on claims as granted’.
I am surprised and we dig this deeper…
Turns out – the Patent Office issued us a WRONG set of claims in the certified copy!
SPEECHLESS.
Freq. Anon.
Your posts on such issues are always thoughtful.
I would like to comment on a couple of things. Corruption is rampant, not only at IP office but in the whole country. Transparency will help in cutting down the corruption. But I think we need to look into this matter in a coherent and harmonious manner. It’s always advisable to go to the root of the problem. Trapping the dishonest government officials may not help this problem absolutely. By doing so, we may get hold of the corrupt officials but won’t be able to eradicate the problem.
When people (including IP stakeholders) shall change their mindset more into a moral sense (forbear giving bribe) and IPO officials shall get equalizing returns in terms of salary or perks or other facilities (compared to the work done by them and compared to salaries paid to government officers of other countries), then corruption may get reduced to some extent. Reformation is effective than deterrence through transparency.
FA: This is shocking.
tks for sharing FA,
so did they give you details of another patent altogether? or did they simply give you wrong claims for the same patent? if the latter, its more curious–for where would they have picked these claims from? as i understand from TenXC, the claims as printed were from the last but one version that finally issued.
Dear S:
you’re absolutely right—it needs multiple solutions. but i wouldn’t hold up the holistic nature of the solution to suggest that we shouldn’t be tackling any specific aspect at all…indeed, several different groups need to tackle it from different angles. and perhaps people like you need to initiate the kind of measures you suggest for better results. we chose to do it through transparency—since the medium of the blog is most conducive to reporting and ushering this in…
as i note in the piece: “Although corruption is a complex institutional problem requiring a multi-pronged solution, one way to redress this malaise is by simply being more transparent.”
Dear Shamnad:
They gave us the last but one version, kind of like TenXc.
Regards,
FA.
Hi Shamnad
Thanks for sharing this.. quite informative as always. Was eagerly waiting here at the GE’s Annual IP Symposium to listen to your take on different IP issues in India. Was disappointed to learn that you were not coming. Hope to see you here next time!
Regards
SK
Dear FA,
This is ridiculous. And a huge international embarrassment that we call ourselves an IT superpower and cannot get our database act together!
Dear SK:
thanks for your kind words. I was very ill and had to cancel at the last minute. Look forward another time.
Dear Mr. Samand Basheer
As a person who have interacted many times with IPO Delhi, I wish to share a few points.
Increased transparency and technological access will surely curtail the undeserving earning of Patent Attorneys but is not likely to help much in improving the working of IPO. IPO is suffering of a much deeper malaise which is the attributable to the quality and motivational level of people engaged there. Firstly the Ministry of Commerce is treating this as any other department with no apparent consideration of its functional duties. Resulting in, it being a ground for placement of persons having good sycophancy skills from other departments. There is no accountability nor any responsiveness. A visitor to the Patent office is more of a problem than a customer.
Other factor is the load work of Examiner. One interaction with them will convince you that he does not have time for even looking at you application, let alone to do what he is accepted to do.
In such a environment increased transparency will only serve to highlight the mistakes and despondency of IPO more than improvement in efficiency. Sunlight cannot be the disinfectant when there are dark clouds.
R.K.Jain
Dear Mr Jain:
I’m afraid I cannot agree with you on this. I don’t see transparency as necessarily an exclusive strategy devoid from others (such as efficiency, work etc). In fact, you yourself mention accountability. and from what little we’ve seen of the effects of transparency, it certainly increases accountability. I think they must all complement each other. But that does not mean we stop our advocacy for more transparency. All strategies for a better patent institution must be pursued.
Nothing like a bright sun to disperse dark and depressing clouds, don’t you think?
Dear Mr Jain:
I’m afraid I cannot agree with you on this. I don’t see transparency as necessarily an exclusive strategy devoid from others (such as efficiency, work etc). In fact, you yourself mention accountability. and from what little we’ve seen of the effects of transparency, it certainly increases accountability. I think they must all complement each other. But that does not mean we stop our advocacy for more transparency. All strategies for a better patent institution must be pursued.
Nothing like a bright sun to disperse dark and depressing clouds, don’t you think?
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