Earlier this year, the Patent Office entered into an outsourcing agreement with the Council for Scientific & Industrial Research (CSIR) wherein a specialized division of the latter would conduct prior art searches for pending patent applications and prepare search reports which would be used by patent office examiners to decide the patentability of an invention. The ostensible reason behind this move was to help clear the massive backlog of patent applications at the patent office. This story was initially reported by Soma Das of the FT and we had blogged on this earlier over here. There was a spirited discussion on the merits/de-merits of such a move in the comments section of that earlier post. Image from here.
Now that it has been a good ten months since the project kicked off, I would like to reopen some of the main issues for debate and discussion on the blog and invite, in particular, the examiners and controllers at the patent office to contribute to the discussion in the comments section. Unfortunately since both the Patent Office and CSIR have not yet made the outsourcing MoU public we will just have to speculate on some of these issues:
(i) Are the ‘prior-art’ searches conducted by CSIR helping or easing the burden of the Patent Office examiners? According to the clarification from the CSIR, posted here, its job is restricted to only searching for prior art and forwarding the same to the Patent Office without conducting any analysis on the patentability implications of the prior art searches. This would mean that the patent office examiners would still have to analyse the prior art searches and conclude on the patentability of the invention. Given the extensively computerized databases available these days for conducting prior art searches, do the CSIR ‘prior art’ searches add any value? One possible answer to this question could be the fact that it takes considerable skill to conduct ‘prior-art’ searches even on a computerized database and that such a skill-set is available amongst the CSIR scientists. Alternatively it is possible to state that mere ‘prior art’ searches are of no use because the patent office examiners can handle the same through computerized databases.
(ii) One of the main concerns expressed earlier on the blog was the possibility of a severe ‘conflict of interest’ on CSIR’s part because of the fact that the CSIR is also one of the largest patent-filing entities before the patent office. Soma Das had originally reported that both patent office and the CSIR would make sure that CSIR did not conduct prior-art searches for its own applications. However the possibility of conflict of interest does not end over there since CSIR would potentially be examining the applications of its competitors. As explained in Das’s report, patent office examiners are statutorily barred from filing their own patent clarifications. There is still no clarity on the exact nature of the safe-guards that have been put into place. We don’t even know if the MoU outlines all the safeguards that were required to be put in place by CSIR.
(iii) A more fundamental question, involves the very legality of the outsourcing of such a job to CSIR. Going by a literal interpretation of Sections 12, 13 of the Patent Act, 1970 only an examiner is authorized to examine a patent application. Do ‘prior art’ searches fall within the scope of Sections 12, 13? I’m not going to answer the question but the pertinent question to ask at this stage is whether the Patent Office, the DIPP and the CSIR have sought and received independent legal opinions vetting the legality of outsourcing prior art searches? If so, where are these legal opinions? Why have they not been made public along with a copy of the MoU?
It is probably time for the CSIR, the DIPP and the Patent Office to make public some of these crucial documents and also request patent examiners to give anonymous feedback on the efficacy of the outsourcing project.
When the Hon. Delhi High Court has explicitly ruled in the TenXC case that Indian Patent office should not use the search reports by WIPO designated search authorities, how does CSIR become excluded from the ambit of this ruling? Search for prior art is an integral part of the examination process. Therefore it falls within the purview of Section 13, without doubt.If the IPO continues outsourcing to CSIR or any other outside organization inspite of this, would it not amount to contempt of court? Try getting an answer straight from the horse’s mouth.
I completly agree with point (ii) concerning the ‘conflict of interest’ as CSIR itself is an R & D organization with a big patent portfolio and consequently a huge self-interest. Having said that, there would be few other organizations in India that would be having the skill-set required to conduct prior-art searches on every conceivable technology besides CSIR. The only other option for the patent office would be a tie up with a commercial patent search database; that would of course entail additional expense.
The article is well composed and brings out facts before the readers.
However, I am surprised by the speculative discussion (which is of no use when an IAS of GOI dictates). The essence of the process of examination has been misinterpreted (an usual practice by most of the administrators of the Patent Office due to lack of their technological expertise) when the article speculate:
A. ‘such a skill-set is available amongst the CSIR scientists’
B. ‘This would mean that the patent office examiners would still have to analyse the prior art searches and conclude on the patentability of the invention.’
I point out the following facts which has been overlooked by the author in this article–
1. Analysis of prior art is possible when the correct and the most appropriate prior art are found through an exhaustive search. It’s not an easy job unless one has adequate research skills, industrial skills and knowledge of updates technological findings. Secondly during this prior art search, one need to keep in mind the definitions (and their practical implications) of ‘invention’, ‘inventive step’, ‘obviousness’ and ‘patentability’. With due regards I state these officers (they are not hard-core scientist literally although their positions are documented as ‘scientists’) in CSIR may have knowledge and a separate division of IPR; but how they obtain knowledge and practices of the Patent Office where thousands decisions are given by way of forming tribunals? Therefore, the expertise in the Patent Office is quite different from that of any wing of IPR in any Govt/non-Govt organization. It is evident that IPO would have much scopes to form better skill sets (which is not available right at this moment due to the poor composition of the recent task force and many skilled officers with very high background have left the organization in the recent past). It is shameful that the dictators in the Patent Office haven’t realised this fact and they have just ‘outsourced’ a very prominent issue to someone else without thinking twice.
2. Prior art don’t indicate only patent literature, it includes non-patent literature too. Therefore, anticipation of a patent application is not an easy task to do. Given the set of prior art (within the meaning of the same as per the patent act and rules and the decisions of the court) it is quite hard task for an examiner to conclude with ‘patenttability’ only. The officers of CSIR might have kept something else in mind while picking out those prior art and these prior art may not be correct from an examiner’s view point as he will consider critical decisions and other databases while making a prior art search.
3. The initiate of outsourcing the prior art search by a section of bad administrators in DIPP and the patent office is wrong and this test should not be conducted; the admin people of IPO should recruit more highly qualified (which is lacking now), skilled researchers who has both industrial and research exposures and a sound knowledge on IPR.
Dear Mr Reddy,
I am dismayed at the high decibel blogs being put forward on the cSIR issue. The fact that MOU between CSIR and IPO is not in public domain is a constraint clarifications. But get it through RTI as proposed by you. Surely that can be done.
Further to the moot question of CSIR being engaged by IPO for doing prior art searches is being potrayed as something unwarranted. The clarifiaction from CSIR which is a govt institution that its role is limited to searching for prior art and not to analyse it from examination purpose.This is analogus to seek “google search” wherin the searcher gets to pick the most appropriate options made available. Given the backlog and dificulties at IPO, this is an initiative which must be seen as an step forward and improved upon. Critisism should not be the replaceemnt for critical analysis.
Also a small submission to the CSIR gentelment of CSIR writing the blog and in charge of IP assets management.Sir take pride in your work with humility. You have an opportunity to learn and contribute. Do not disparge the writers on the blog. Face to face someday you may find that some of these bloggers are people of unmatchable talent and unparalled working capacity. It takes extraordinary capacity to be a regualr blogger after a demanding workday.
Regards
R.K.Jain
Patent Agent
@ Anon – 1:36 PM: Good point anon.
Prashant
People of CSIR should not claim that they are the ‘best’ IPR searchers. 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.
DIPP/IPO has hired CSIR to do prior art search. It is a transaction between a buyer and vendor. The buyer has decided the scope of services and vendor has agreed. As seen from the clarification of vendor, they have been providing services and buyer has never complained to vendor about the quality of services during the whole year. Now some employees of buyer have raised the issue about the scope and quality of work. The question then arises is to why did they not use their internal mechanisms and communicate with vendors to fulfill their obligations? Why this sudden publicizing of debate and trying to use SpicyIP as a platform for resolution of grievances without first following proper organizational procedures?
The main issue for debate raised by DIPP was that they have taken an initiative to outsource which is proving beneficial and in the interest of clearing backlog, they would like to expand this to outsource to other organizations. This clearly shows that DIPP is not committed to CSIR alone and is open for any other suggestions. Instead of passing judgments on IPO-CSIR agreement, why not have a healthy debate on the issue?
@anon 12:56
your interpretation of the outsourcing as a transaction between vendor and buyer shows your wisdom about Patent Act ,and specifically about prior art search.
Since as you are talking about “procedures” ,the “publicity” being sought is another democratically allowable procedure.I am sure that you are learned enough to know the same.
@anon 1:02
Enlighten by throwing light on healthier/positive aspects of this outsourcing arrangement for the sake lesser mortals.
@ Anon 11.16 AM
Wow! That was quite full of barbs.
I have no clue who was the one you were responding to.
But do you, by any chance, work for an organisation which wanted the deal but did not get it?
Enlighten by throwing light on healthier/positive aspects of this outsourcing arrangement for the sake lesser mortals.
—————
It is not a secret that there had been many cases where patents used to be granted freely at the discretion of the examiners even when there was prior art. That is not going to be possible anymore (or at least there would be a check) due to independent search report. Is that not a positive aspect?
The observation (ii) in the original post is rather strange.
The prior art search is a part of patent examination, which typically would start AFTER the patent has been published i.e. available in public domain for everyone.
How does CSIR gain by knowing what is already known to everyone?
@ anon7:37
Be assured that i am not !IMO
debates at any platform will shape ideas.i see one in your comment.Hope you will put it in practice.
@anon7:48
so you feel this will checkmate
the indiscriminate use of discretionary powers.btw how effective ISR’s/IPER’s have been as checks .pl check the ratio of refusals vs grants. checks and balances have been ignored till now ,but i am not sure how csir report will do that because as long as accountability ,and discretion are not together ,nothing will change.
@ Anonymous 6.51 AM
“So you feel this will checkmate the indiscriminate use of discretionary powers” is like asking whether a strong Lokpal would actually stop corruption.
In all likelihood those who want to continue malpractices will still find their way around any and every law.
But additional checks help in curtailing such issues to some extent. At lease one cannot feign ignorance of prior art if an external document is available for review and sign-off.
@anon 8:01
while i am for strong lokpal i know how effective it will be unless judiciary is strengthened.it was proved by researchers of premji university that strong lokayukta alone is not sufficient and the conviction rate is very poor ,more so in the case of higher officials.the former cm is back in society?
The money spent on creating checks can rather be spent on third party audits (including CSIR urdip) on search strategy /grants/ refusals reg quality.
please give your thoughts .
There is nothing wrong in that agreement. But My personal views which are based on my own experience in Patenting procedures are given below.
As Per Sumathi’s analysis:
It is good analysis you have done, but to my knowledge this work has to be done by professionalism in this field of art with some confidentiality. Actually I am astonished with the facts even though I work for the same organization that too as IP Coordinator. Some how I am managing it what ever possible ways, it is not a joke to manage unprofessional persons that too with only purely academic knowledge and joining R & D and S & T without any management or professional back ground. The support that we get is very minimum from other service sections and also from the top management persons who them selves do not have any professional approach. Obtaining a patent that too in the competitive field with some industrial application is very difficult, that too with the kind of scientists whose orientation is to publish in high impact factors for their own reasons for getting laurels and awards.
I still feel that CSIR has to gear up for this type of work which is totally interdisciplinary in nature. It requires totally different type of attitude and aptitude unlike other sectors. People should be adoptive and receptive very good in logical and analytical methods.
I am not surprised as I do have good exposure to other R & D units also of public as well as private, in private sector it is too little.
In Public only few are flourishing that too with grate difficulty. Even our educational system is like that, never oriented for any industrial applications. IIT’s were some what good but now even they are also lagging due to competition and patenting procedures which they never bothered earlier.
Without a touch of any professionalism IP portfolio shall never take off, even it is required for those who work in Patent Offices, then only the things do move.
And here are Sumathis response for my views:
Dear Mr Bheemeswar –
Thank you for your comments and insights. Let us hope that the IPO and CSIR bring more professionalism into their workings, as you suggest.