While it is now established beyond doubt that missing files are a massive problem at the Trade Marks Registry, I would like to know from patent lawyers whether they are facing a similar problem at the patents office. So far I know of only one case which ended up in court over a missing pre-grant opposition file. That case had been filed by Polymedicure Ltd. and did not involve its own files but instead the files of a patent which it wanted to oppose. We had blogged about it over here.
I’m guessing that the patent office deals with far fewer files than the trademark registry and unlike the Trade Marks Registry, the work of the patent office seems to have always been de-centralized, so there is a little chance of files being lost in transition.
In any case, please do share with us any stories of missing files from the patent office.
According to an order by the CG, patent controllers are supposed to issue an order within a month after hearing. Agents can verify if such orders have been issued. If not, most probably the files would have gone missing.
Dear Prashant,
Missing files are indeed a problem with the patents department as well. We have been trying to have the copy of 152/BOM/1999 which was later granted in the form of IN191532(sealed on 17/8/04 ) on behalf of the applicant for almost 6 months now. Repeated followups and personal visits to the concerned authority have led us to learn that this application is among many others which are now untraceable. Unfortunately in this case, the applicant, who is our client, himself has lost the patent copy, and thus there seems to be no open door for retrieving a granted patent which is in force as on date!
Mr Anonymous
I think your presumtion is tottally wrong as does not seem to understand the practical difficulty. After hearing, the documents submitted by party need to be examined in legal and technical nature and therefore it takes time to decide the matter.I is correct that normaly the order may be issued within one month but understand the controllers other work relating examination and supervision of examiners work. Therefore any delay in issuance of order does not mean that file is missing. I hope you will try to understand this before making such a blatant statement
Dear Anon (5:48),
Thank you for those details.
Cheers,
Prashant
I got the following comment from one of our readers. Its a little funny and a little scary:
When I was working at a FMCG company, there was a specific patent file which was allegedly “ready for grant” by the Controller, but yet for which we had not heard anything for 4-5 years. Every 6-months to 1-year we (our agents) would send a request for an update, and then every time we would hear nothing. Finally we received a bemused note from our agent who said something to the effect:
“The Controller has finally told us that the file was stored at an off-site storage facility and was eaten by rats (or maybe it was that rats made their nest in the file – I can’t recall exactly which). We were requested to send the Controller a copy of our files for his reference. We have done so. We believe that the case will be granted soon.”
The case did grant soon thereafter, I recall.
It is the fact that the number of ‘missing files’ in Trade MArks are huge. But there are missing files in Patent Office and Designs Office too. Previously the head of the office used to re-constitute the Patent files based upon a note from Assistant Controller. Under certain personal constraints of the Assistant Controllers, the patent case used to vanish from the rooms of the patent office. The fact was, if the AC is dissatisfied with the exhaustive examination of the examiner and the patent application is about to get rejected by the examiner and the someone influential of the agent house is very close to the Assistant Controller, the patent case used to vanish from the patent office! After few months the case used to re-constitute by the Head of office and the case used to be allotted to some examiner with low calibre in examining such cases. These ACs are now promoted DC or about to get promotion to the level of Deputy Controllers. The same backbone less management is continuing in the patent office and loads of files are vanished. There are other reasons sometime wherein few peons and staffs are involved to vanish the files just to obtain a note or two of INR 1,000/-. Again, the question of transparency, accountability and corruption is pinpointed to the existing administrators of the patent office and design office who vanish loads of files. Ministry, DIPP know the fact but they don’t take any step as the administrators in the patent/design office are too influential. Influence increases as these officials are sitting in the same location for more than a dozen of years. So, ‘missing files’ are not missing files, these are ‘vanished files’.
Anon @ 11:51 PM. Very true.There were instances when applications recommended for refusal by an examiner would be returned to the same examiner as a new case. If the examiner is straightforward and assertive it is allotted to another “co-operative” examiner preferably of lower calibre.Such obedient examiners are rewarded with out-of-turn foreign trips and lucrative seminar/awareness or training programs where some money can be saved.
Many applications filed by big patent firms are not refused by controllers even when recommended for refusal from examiners. This is because controllers paid monthly by such firms. The same controllers refused ordinary applications filed by individuals.controllers always put pressure on examiners to change their noting by repeatedly calling for discussion.Many examiners are tired of discussions with controller and they finally agree to do what controller says because it is a big waste of examiners time.cg given order that controllers should not do search after examiner submit report,inspite of this many controllers are doing own search to find fault in examiner report.
@Anon, 12:00PM, just a small correction (having high impact) — those “controllers” are senior controllers now. Most of the new controllers are just silent spectators and they have good knowledge and skills. The later controllers examine now a days although the patent act doesn’t permit them to do so. Hon’ble CGPDTM doesn’t know the practice of the patent act and this is one of the instances.
Dear Prashant,
I have entrused with a case, where the Patent Application was proceeded to Grant years back and status was shown till October 2011 as marked for examination. When we enquired the status (IN/PCT/2001/776/MUM)was changed to deemed to have been withdrawn U/S 11(B(4).
The Section 11B(4) is quoted herein below:
“ In case the Applicant or any other interested person does not make a request for examination of the Application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by Applicant”
Before 2002 amendment in the Patent Acts, it was not required to file a request for examination. But after that amendment, u/s 11B(2) the request filing was made mandatory even for application filed before 2002 within 12 months from passing of amending Act (i.e. by June 25, 2003) or within 48 months from date of Application (i.e. May 31, 2005). Moreover, u/s 11B(3) the request could be filed by December 31, 2005
Whereas in the instant case the Applicant made a request for examination(445/RQ2004 dated February 17, 2004) and thereafter the Application was examined and FER was issued also. In this context following documents were submitted by us with Patent office with copy of DIPP officials as well as COntrollers and Head of Office.
(i) First examination report dated March 31, 2004
(ii) Response dated July 26, 2004 to first examination report
(iii) Second Examination report dated February 21, 2004 (wrongly mentioned as 2004 instead of 2005 by Examiner)
(iv) Response dated March 19, 2005 to second examination report along with amended set of claims
(v) Further response dated March 30, 2005 along with amended set of claims
(vi) Further letter dated June 20, 2006 with amended set of claims (as granted in US) along with copy of US Granted claims
(vii) Final set of claims as approved by Controller and submitted with Controller
(viii) Letter dated February 7, 2008 to Controller enquiring about status of the Grant.
There has been more than 5 years delay in communicating the LPD in the matter and when complaint was made in this regard to Patent office, surprisingly the status was updated to “Deemed to be Withdrawn U/S 11B(4)”.
We made complaint to CG as well as DIPP officials as well Head of Office mumbai Patent office that it appears that someone is manipulating with the records for some malafide and vested reasons and in view of peculiar circumstances of the case, the matter needs to be investigated and stern punitive action must be taken against officials who are responsible for wilfull and deliberate manipulations with online records of the Patents.
But till date no communication is received neither the status is updated.
@anon 1:35
In spite of high court’s order if examination is being done by any one who is not authorized then it is their fault.More over having practiced such obedience ,such people are sure to demand the same in due course of time from their subordinates.
One of my files was missing in patent office. I filed RTI application as the status shown was abandoned inspite of having complied with all the requirements of the office within the time period. The file has been since traced, but the office is yet to do anything still after so many months. Perhaps another RTI is being expected by the office.
Dear Friends,
Lots of discussion have yet been made on the issue of a transparent patent office, design office and trademark office. No Govt official has ensured such a system, rather they tried to hush up documents and illegal acts, corruptions by way of making interest groups amongst them. I request all of you to be unite to pounce upon the degraded system in the patent office. Please send strong feedback to the DIPP discussion paper immediately at the following emails given in the website: http://dipp.nic.in/English/Discuss_paper/Feedback.aspx [7th paper in the list]:
Emails: [email protected]; [email protected]; [email protected].
Our sole mission is to kick out the corrupt, negligent and stupid officers from the system. We pay taxes to the Govt and these scum of the society enjoy benefits and earn personal gains out of our hard earned money. Be unite please and pounce upon them by way of sending feedback to the DIPP discussion paper within 31 December 2011 positively.
Law implementing authority is breaking law —-
Indian Patent Office is a place where all wrong information are provided to public. For example,please refer to the following website of IP Office, India
http://ipindia.nic.in/rti/index.htm
Now see the “numbers of officers working in various categories in different offices” under the heading “A statement of the boards, councils, committees and other bodies”.
Further “Monthly remuneration received” is also wrong.
Indian Patent Office falsifies facts under the heading “The Powers and Duties of its officers and functions”. It is written:
“Sr Joint /Joint/Deputy/Asst Controllers( Sr Group-A ) :- They have the delegated powers to carry out the functions as Controller under the Act.”
Assistant Controllers are examining now a days in the Indian Patent Office under the names of Examiners and using the module username and passwords of examiners which IS ILLEGAL, UNETHICAL AND A CORRUPT practice.
These class of Assistant Controllers in IPO are dangerous and they are NOT HELD ACCOUNTABLE FOR THEIR ILLEGAL ACTS and it is difficult to set the accountability of below-quality examination by those new ssistant Controllers in IPO. DOES DIPP OR CGPDTM TAKES responsibility and accountability of low calibre examination EVEN AFTER THE CHENNAI HIGH COURT VERDICT NOT TO ASK Assistant Controllers of IPO to examine? Law implementing authority is breaking law even after a strong decision of Chennai CAT, and Chennai High Court. Mr. P.H. Kurian verbally dictates the office to act in an illegal way. Who is held responsible for this illegal act Mr. Kurian?
Dear Anonymous @12.28
You have spoken about the Patent Office only about breaking law. There is rampant violation/breaking of law by the TM Office. Look for the following:
AS per law the TM Office is required to serve the TM-5 within 3 months of the receipt of the TM-5 by the office. In so far I know there are several TM-5 filed in TM Office (I am talking about Delhi office) filed as early as 2004 which are pending to be served. The other offices are serving TM-5 within even one month. Hence the TM-5 filed in Delhi remain unserved for several years while the other offices serve the TM-5 filed in 2011 itself.
Almost similar is the position with respect to serving of TM-6.
As per Section 23(1) the TM office has to issue the registration Certificate within 18 months of the filing of the application, but there are several cases where even the examination report is yet to made and in some cases where the examination has been done but is yet to be served.
Under the directions of our Hon’ble CG, the applications which consist of the mark which is already registered or pending, the application is not to be accepted. If accepted the threat is that very strong action will be taken against the officer who has accepted it. If that be so, then the provisions of Section 12, 33 and 34 become redundant. This also negates the judgment of Gujarat High Court in the case of Cadila. The question that I raise is that can a beaurocrat (read CG) over rule the provisions of an Act of parliament.
I agree with Anon 9.58 AM. Delhi office people are lethargic and have been keeping the papers with them and not serving the TM-5, TM6 etc.
Today I saw a news item in newspaper under the heading “Despite delays, Delhiites seek no compensation” in HT. It refers to some Delhi (Right of Citizens to time bound Delivery of services) Act, 2011. I believe there is some thing like that in Maharashtra too. From the name it suggests that it is for Delhi only. I wish similar Act would have been there for Central Government offices too. Or may be there is and I do not know. Does any one know if there is any?.
There is provision for compensation of Rs10/- per day subject to maximum of Rs200/-. One should ask for compensation as it would fix responsibility. If the responsibility is fixed on a particular official, then it would definitely act as a deterrent for him/her in future. This may even affect his service career.
I remember in one writ petition in Delhi High Court, the TM officials had given an undertaking in the court that they would dispose off letters of applicants (which they call as PUCs) within the period of 45 days. However, it does not specify any such kind of compensation as provided in Delhi (Right of Citizens to time bound Delivery of services) Act, 2011. That is the reason that the said undertaking is being violated more often than not. The TM Office just does not bother about the PUCs.
Interestingly the letters which the applicants write to the TM Office (PUCs) are uploaded on the website (digitized), but yet the officials do not take action. Meaning thereby that one can look for himself that even though the letter has been received by the TM Office and is in the knowledge of the officials, yet they do not bother to act upon the said letter.
I will tell you a strange kind of lethargy of the Mumbai TM Office which prevailed for many years. I do not know of the latest position whether the same is continuing or not.
The dak which applicants send by post/courier is opened at the whims and fancies of the babus and entered in the cash register depending on their moods (where the papers are attached with Government fee).
On this account there are various papers which though were sent by the applicants in time and even received by the TM Office in time, yet the same are in trouble on account of the above mentioned moody entries of the babus. The TM-5/6 received by the TM Office in time with fee has been entered late rendering the same as time barred. TM12 having received in time but having entered late in the cash register would give occasion for the Babus to ask for additional fee of Rs.3000/- with TM-10 etc. etc.
Even for non cash papers there has been problems as regards the limitation (like evidence in support of opposition/application and evidence in reply etc. etc.
I have been trying to trace a file from the last 5 months. But I think that the file might have been lost. They are not even giving a proper reply in the RTI. This is happening in Kolkata.