We recently received an email from CSIR objecting to one of my hearsay comments in an earlier post on the quality of prior art search being provided to the Patent by the CSIR.
My statement was as follows:
“The most interesting submissions, in my opinion, is from the ‘Officials of the Delhi Patent Office’. Not only have these officials questioned the practice of outsourcing examinations to the CSIR, they have also criticized the quality of examinations conducted by the CSIR. These officials have also made some interesting recommendations on improving the internal systems of the patent office.”
The document which I was referring to was a submission by Delhi Patent Officials to the DIPP. The ‘criticism’ that I referred to was the following extract:
“While the efforts taken by the department to strengthen patent offices in recent past is praiseworthy, the initiative to outsource prior art search is not proving fruitful, for want of statutory mandate and more particularly due to lack of any search analysis on novelty and inventive step by URDIP, CSIR as the searchers are sending only the cited document number which is of no practical use to examiners. Further the report send by CSIR are not in user friendly format requiring double time consumption by examiners. The Patent Act provides for search and examination to be conducted by the same examiner – a practice which even EPO has recently adopted under their BEST (Bringing Examination and Search Together) practices. As stated above, the search reports received from CSIR hardly serves the required purpose as the concerned examiner has to conduct fresh search for assessment of novelty and inventive step to satisfy himself as mandated under statute. Therefore no outsourcing can be probably thought of without bringing suitable changes in the statutory provisions. Alternatively outsourcing agencies for digitization, searches should be brought under CGPDTM on the pattern of JPO as internal agencies working for CGPDTM.”
The following is the clarification/rebuttal that we have received from CSIR:
“CSIR-URDIP is not conducting the examination of patent applications. The scope of our services is to search for prior art. DIPP also in its discussion paper has clearly stated that ³The Department had taken an initiative to outsource some part of the prior art search of the Patent office to CSIR.²
The scope of services and format of report was discussed and finalised in consultation with the office of CGPDTM.
Prior to entering into a MoU, we had conducted a pilot for the IPO. The results were evaluated by the team of examiners and they were discussed at length with CSIR-URDIP team on a case by case basis. We were specifically asked not to write any comments about novelty or inventiveness of the invention.
We further wish to state that up till now no feedback has ever been received from Delhi patent office on any of the search reports submitted by us in spite of our repeated requests. If they had any comments or feedback (positive or negative), they could have communicated the same to us in the first instance. Without knowing the background and context of the whole matter, it is unfair on the part of commentator to question the quality of work done by us or highlight only a particular portion of certain document.”
The objectivity of feedback and comments of patent examiners should be properly construed in appropriate context. After all, in this case they are on receiving end as some of their work is outsourced and they would be never happy about involving third parties in this exercise. It would be very nice if a reliable and credible third party can actually evaluate the quality of prior art search conducted both by patent office itself and the CSIR.
Good point Anon.
I think that the patent office officials make an interesting point. What use is a mere prior art search if it is not accompanied with any analysis.
Best,
Prashant
Yes, this objection is valid but what if patent CSIR is bound to limit itself to the provision of prior art without technical judgement as they have indicated! I think the whole exercise is still a positive development as very few patent offices are opening their doors for expertise which is located elsewhere. Given India is coming in limelight (due to pharmaceutical patents etc.), the patent office should adopt a welcoming and positive attitude instead of looking it as a trespass over their jurisdiction. They should take a further step of soliciting public feedback on prior art by setting up projects like Peer to Patent. After all, it is all about patent quality by the end of the day and there is no harm in being proactive.
I received the following comment from D Bheemeswar. I’m pasting it below for general viewing:
Dear Prashant,
There are so many aspects of each and every patent depending on case to case, one thing has to be born in mind that any thing is not absolutely perfect. India has yet to learn the patenting art. We at CSIR have very good system of search and finding the prior art as far as possible and also each patent application is subjective of the examiners views. The URDIP’s program was different to digitize CSIR patent applications as well earn money through consultancy based on the experience built up. Now CSIR has evolved some strategy with our waste experience to get more commercially viable patents specially my self as IP Coordinator has introduced some radical changes at my end at NIIST, CSIR, Trivandrum and also IPU, CSIR has modified it’s priorities and all of us are doing well. One more thing those who are working knows what sort of difficulties we are facing, we have to mange one side the potential intellectuals from one side and from another side examiners objections or comments and another side audit queries and overall people who do not art patenting asking so many ……….Over the top of it IP asset management and initiating business is not a joke. Over all of this there are so many clowns and buffoons who know only the spelling of the patent and does not know what is patent analysis start commenting.
The amount of encouragement that a patent examiner or people who are involved in the art of patenting is nil, more over all brick bats only. We have yet to make good understanding of the evolution of patents in India, from scientific workers, patent management personal like me and others attorneys patent examiners and Industry or end user.
In India people know only how eat and talk without digesting it and win over foolish arguments and make high drama out of nothing even without trying to understanding the ground realities and call them as patent analysts or researchers in patenting. It is all cheap publicity what you people wanted.
You people of this cite should understand first learn the art of patenting and then start commenting,
Here I am again, the same Anon!
I do not want to engage in art of patenting debate with D Bheemeswar whose comment is, to me, a bit excessive and rude. Patent attorney and examiners in the United States also reply in the same manner when questioned about the grant of patents over very obvious inventions. USPTO still takes pride on what it has been doing with trivial business method patents and the answer is always this: you don’t know but criticise and first learn about this super-super technical filed. Pharmaceutical firms would tell you the same story when you will ask them questions about patenting all salts, isomers and other forms of same molecule. You do not know about chemistry man, typical rant. First learn about it and then talk about it. Yet, we – the illiterate – keep on raising questions and writing and citing books like Innovation and its Discontents, Gridlock economy etc.
Just want to ask one thing about actual post. If I am not wrong then CSIR also files patents on its research. Do the have different researcher working in prior art search project or the same slot work on all projects?
Good question Anon – I’m going to file a RTI and ask the patent office to give me a copy of this MoU. We’ll have some answers then.
Best,
Prashant
@anon 7:10
i agree with you patent office employees would be never happy because they have a stake.
but isnt it also true that CSIR also has stake as applicant and as searcher!
further assuming a 3rd party finds that neither CSIR nor URDIP is up to the mark what do you suggest.
D.Bheemeswar’s comments sound like that of a corporate though he is not.
In this context it is relevant to note that a third party with no stakes, but with statutory authority has to say in a similar context.
“In TENXC WIRELESS INC vs ANDREW COMM (posted in spicyip),Delhi high court held that
8.3.1 Reference to Sections 13(1) and (2) of the Act indicate that the duties set out therein for the concerned Examiner are mandatory, in view of use of the term “shall” in both provisions. It is therefore inconceivable that the statutory duties of the concerned Examiner to conduct a prior art search can be set aside or circumvented by reliance on the findings of the International Search report given by WIPO designated search authorities”.
Let me break this hidden truth about the pilot project conducted by CSIR for the IPO. It was evaluated by the IPO and found unfit. The larger truth is that the entire outsourcing agenda was the pet peeve on an influential official in DIPP who had submitted a report on outsourcing after he visited Japanese Patent Office. BTW he belonged to the clerical cadre and had attended the training meant for Patent Officers. He had managed to hard-sell his idea to the mandarins at DIPP who had no idea about examination or prior art search etc. Once higher ups decide that something is good for subordinates then that would have to become the truth irrespective of what happens on the battle field.
Anonymous @11:14 AM , thanks for sharing the truth. Most of the officers of IPO know this fact. However, they are scared to publish the truth. IAS officers and a section of officers of DIPP and the office of CGPDTM travel USPTO, JPO, EPO and they just recommend something by mere copying these patent offices. A recent discussion paper in DIPP website on IPR is in the same tone. I am afraid of the fate of IPO if IAS officers start reigning in this way in IPO.
People of CSIR should not claim that they are the ‘best’ IPR searchers. Theoretically they may know many things, but can this guy of CSIR state how many patents of CSIR is in public domain? How many of CSIR patents are feasible and economically viable? Most of the Patent Examiners/Controllers allow CSIR patents as IPO needs to show “Indian Patents” to the ministry during annual reports. Most of the CSIR patents are for their promotions and career upgradations. In this way, CSIR wastes money of people of India.
I have found a document in website wherein the merits of the 38 patents filed by the Director General of CSIR, Dr. Samir K Brahamchari are termed as ‘bogus’. Please see the following link:
http://xa.yimg.com/kq/groups/19288733/906966593/name/38+Bogus+Patents+of+SK+Brahamchari.pdf
Under such a state of affair, how do we trust CSIR? Does DIPP or Mr. Kurian know this fact at all or have the capacity to understand the fact of CSIR?
Outsourcing to CSIR will be a dangerous affair for IPO.