A secretive search for prior art

The agreement between the Intellectual Property Office (IPO) and the Council of Scientific and Industrial Research (CSIR) to outsource prior art searchesare the IPO’s “confidential documents”, according to CSIR, and it is for the IPO to decide “how much information it wishes to put in the public domain”. CSIR also believes that this information is exempt from being put out in the public domain as it is lying in their possession by virtue of fiduciary relationship with the IPO.

This was in response to our query to CSIR under the Right to Information (RTI) Act, 2005, on the Memorandum of Understanding (MoU) between itself and the IPO on the outsourcing of prior art searches.(Image from here)

It also appears that CSIR may not have sought or received any legal advice on its own part before entering into this MoU. According to CSIR, the decision to outsource prior art searches was taken by the Department of Industrial Policy and Promotion (DIPP). And it was (only) the DIPP’s responsibility to consider the legality of such outsourcing.

What started this thread was a series of posts on the quality of the prior art searches being conducted under this MoU, and heated discussions, speculations, and clarifications that followed in that context in posts here, here and here. As neither organisation had made the MoU public, and all we had access to was a news report and a handful of emails, we thought it made sense to directly request the CSIR for the following:

  1. A copy of the MoU for outsourcing prior art searches
  2. A copy of the entire official file pertaining to the MoU, including details of the scope and format of search reports to be provided by CSIR to the IPO in pursuit of the MoU
  3. Copies of details of any meetings held in pursuit of the MoU, including minutes or records of discussion
  4. Copies of any independent legal advice, if any, that may have sought/received on the legality of the MoU and related projects

CSIR quickly forwarded the RTI application to its Pune-based Unit of Research and Development of Information Products (URDIP), which is handling the work under this MoU. I’ve uploaded the reply that was sent by CSIR, which you can read here.

There are several questions that stare one in the face —

  • Why is an MoU between two public bodies (CSIR and DIPP) regarded as a private and confidential document?
  • Why are details of the outsourcing of the service of searching for prior art (which directly affect publicly enforceable patent rights) not deemed to be in larger public interest?
  • Why has CSIR not attempted to seek legal advice on this MoU?, particularly in the light of speculation that the service may be in direct conflict with the CSIR’s own mandate of IP protection and patent filing?

Questions surrounding the legality and quality of prior art searches emerged after DIPP released a discussion paper a few months ago inviting comments and feedback on service delivery and administrative reforms at the IPO.

In response to the discussion paper, a group claiming to be ‘Officials of the Delhi Patent Office’ had questioned this outsourcing agreement, and criticized the quality of reports produced by CSIR. Subsequently, the URDIP had clarified to the blog on aspects of the MoU which was published in this post here. For reference, I reproduce the clarification in part here:

“CSIR-URDIP is not conducting the examination of patent applications. The scope of our services is to search for prior art…. The scope of services and format of report was discussed and finalised in consultation with the office of CGPDTM.

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.”
CSIR/URDIP continues to remain tight-lipped about the contents of its understanding with the IPO, and the scope and format of the search reports they were expected to deliver under the MoU. In which case, surely, they cannot expect a fair critical analysis of the quality of their work?
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2 thoughts on “A secretive search for prior art”

  1. To my mind the authorities have wrongly refused to divulge the details and give copies of the documents asked for. You must file appeal before the First Appellate Authority under the Right to Information Act (Dr. K. Jayakumar).

  2. Dear Sir,
    I am not very much preturbed by the CSIr or IPo not sharing information on the agreement. and why should they? Who are we to analyse their work.Their work wil be analysed and will be commented upon by the people who will be affected by their work viz. the applicant to IPO. the self acclaimed analyst with no tangible stake or responsibility could lead to unwarranted interference and development of vested interests. We hear a lot of stories on how leading film critics need to be kept in good humour. IPO has taken a step and let it work. let us not be a judge to settle where no charges have been framed.
    I am more concerned about the concerns shared by the Officials of the Delhi Patent office. From this the task of senior mamangement of IPO seems to be cut out which is to make this agreement get acepatence from its own employees. If this agrrement yields positive results, it wil their influence and control over applications which wil be affected. A traditional Indian burecuracy dilemma.
    patent agent

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