After a few attempts, we have finally laid our hands on that elusive Memorandum of Understanding (MoU) in connection with the outsourcing of prior art searches for the Intellectual Property Office.
The MoU was entered into between the Council for Scientific and Industrial Research (CSIR) through its Unit for Research and Development of Industrial Products (URDIP) and the Department of Industrial Policy and Promotion (DIPP) through the Controller General of Patents, Designs and Trade Marks (CGPDTM). (Image from here)
As you can see, the MoU was originally signed for a year, which period ended on 30 June 2011. It was thereafter renewed for another year, and is due to end on 30 June 2012, or till the target of 2500 prior art searches for the course of the year is reached, whichever is earlier.
While I leave you to read and analyse the MoU at your leisure, I do take the liberty of highlighting a few issues that stood out —
1. There appears to be no clause that deals with conflict of interest. This stands out in context of CSIR being one of the largest patent filers in the country, as well as point #2 below.
2. CSIR also has the option of offering the similar services to other parties (10.3) without any obligations to CGPDTM. These services include “analysis and evaluation of patents/ inventions/ technology/ know-how/ process/ product/ application/ any form of research output”. While the MoU states that “in carrying out such [services], any information from the activity [carried out under this MoU] shall not be used by CSIR-URDIP”, is this caveat sufficient?
3. In carrying out these searches, CSIR will have access to the Traditional Knowledge Digital Library (TKDL) and other such resources (Annex I). Note that in the ordinary course of work, scientists/researchers do not have access to the TKDL. This gives an interesting twist to the argument on why the TKDL has remained inaccessible (even to researchers) — because “lawyers will somehow find a way out of it” (read this old post for more on this story). It’s funny how lawyers get blamed for everything. Or maybe they get undue credit for their (presumed) ability to work around technical documentation as obscure as the TKDL.
4. One question that non-patent attorneys like myself and others on the blog would like to know is — are search reports de facto examination reports? In Indian Patent Office practice, does substantive examination mandatorily and regularly happen after a prior art search report is issued?, or is there no substantive difference between a prior art search report and an examination report? I am most certainly not the right person to speculate on this, and it would be excellent to get answers from those in the know.
The rest of the MoU, I leave you to digest for the time being. Your thoughts and comments are welcome, so long as they attempt to take this conversation forward, and do not descend into a volley of unconnected personal abuse as was encountered the last time this subject was discussed on this blog.
Related Posts
A secretive search for prior art
Outsourcing Indian Patent Searches to CSIR: Insourcing Conflict?
The TKDL ‘free access’ agreements with the EPO, JPO & USPTO: Subsidizing foreign patent offices?
Debating the legality and the efficacy of the CSIR-Patent Office agreement to out-source prior art searches
Clarification from CSIR on the prior art search services provided to the Patent Office
6 comments.
It is really strange to note that why till date TKDL has nt been given access to researchers and patent attorneys, as they are the one who are intially involved in invention development and patent filing…..in such a situation, there will always be a grey area as to what is in domain of traditional knowledge for a researcher…..coming to the agreement, there is no provision in the examination report as for written opinion along with search report..our experiences with IPO on examination report is known…it is simply a one page report which is exactly copied from ISR in case u have filed PCT application…..
Sumathi
let me try to answer you questions.
Are search reports de facto examination reports.
almost same though statute has not defined a search report !
Is a prior art search report is issued at IPO?
Patents Act doesn’t mandate the same . EPO, UKIPO for example, issue a separate search report .The advantage being that applicants can withdraw to save fees by seeking refund.For the offices/public ,pending files will be managed favourbly.
btw,can a URDIP searcher file patent applications as inventor?
Section 10.3 is so wrong in the current context. There are so many questions that remain unanswered. Can “a patent searcher” work simultaneously on searches for CGPDTM as well as a third party?
What about conflict of interest? (not just with CSIR, but also with the third parties/institutions that CSIR may engage with)
In most cases the URDIP “searcher” is a temporary contract employee who may join a patent firm after this job. In that case he is involved in searching and drafting patent applications for many applicants.
Sumathi,
I thank you and Spicy IP as you have done a good job for public interests. I smell that the Pandora’s box is being opened slowly.
The question you have raised are the questions of all IPR professionals in India. And this question should be answered by the authorities of the Patent Office. As seen from the MoU, Mr. P. H. Kurian of IPO and Dr. R. R. Hirwani of CSIR are responsible for this MoU. I do not blame Dr. Hirwani. CSIR’s client (as per the MoU) is the Indian Patent Office and it’s head Mr. Kurian. He should know first that he has done a very illegal job by outsourcing this prior art search. Why didn’t he placed a proposal before DIPP/Ministry to change the legislations? Is it not an arbitrary action on the part of Mr. Kurian?
In order to substantiate my words above, I quote Section 12(c) of the Patents Act 2005 (Amendment):
“Section 12. Examination of application:”
‘When a request for examination has been made in respect of an application for a patent in the prescribed manner the
application and specification and other documents related thereto shall be referred at the earliest
by the Controller to an examiner for making a report to him in respect of the following matters,
namely,—
(c) the result of investigations made under section 13;’
Section 13 of the Patents Act stipulates “Search for anticipation by previous publication and by prior claim”. This section states:
“Section 13(1) The examiner to whom an application for a patent is referred under section 12 shall
make investigation for the purpose of ascertaining whether the invention so far as claimed in
any claim of the complete specification—
(a) has been anticipated by publication before the date of filing of the applicant’s
complete specification in any specification filed in pursuance of an application for a
patent made in India and dated on or after the 1st day of January, 1912;
(b) is claimed in any claim of any other complete specification published on or after the
date of filing of the applicant’s complete specification, being a specification filed in
pursuance of an application for a patent made in India and dated before or claiming
the priority date earlier than that date.”
Now let us see what does Section 13(2) of the Patents Act say:
Section 13(2):
“The examiner shall, in addition, make an investigation for the purpose of ascertaining, whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.”
The above Sections say: once a new patent application is placed before an Examiner of Patents & Designs, the main job of an Examiner includes:
1. to examine the documents of the patent applications in respect of its technological contents keeping an eye on the legal stipulations;
2. to ‘investigate’ the patent application by way of a “Search for anticipation by previous publication and by prior claim” (Section 13 of the Patents Act 2005).
In view of the entire Patents Act 2005 and the stipulations in Patents Rules 2006 any person who is a skilled-in-the-art would state that the actions of the authorities of the Indian Patent Office is highly illegal. Their actions show that they have violated the provisions stipulated in the above sections of the Patents Act 2005 (Amendments). I am sorry to say that perhaps Mr. CGPDTM or his officers have forgotten that they are not legislatures! Why this MoU has been signed by way of violating the stipulations of the Indian Patent Act? Sumathi, could you investigate this matter please?
Sumathi,
I thank you and Spicy IP as you have done a good job for public interests. I smell that the Pandora’s box is being opened slowly.
The question you have raised are the questions of all IPR professionals in India. And this question should be answered by the authorities of the Patent Office. As seen from the MoU, Mr. P. H. Kurian of IPO and Dr. R. R. Hirwani of CSIR are responsible for this MoU. I do not blame Dr. Hirwani. CSIR’s client (as per the MoU) is the Indian Patent Office and it’s head Mr. Kurian. He should know first that he has done a very illegal job by outsourcing this prior art search. Why didn’t he placed a proposal before DIPP/Ministry to change the legislations? Is it not an arbitrary action on the part of Mr. Kurian?
In order to substantiate my words above, I quote Section 12(c) of the Patents Act 2005 (Amendment):
“Section 12. Examination of application:”
‘When a request for examination has been made in respect of an application for a patent in the prescribed manner the
application and specification and other documents related thereto shall be referred at the earliest
by the Controller to an examiner for making a report to him in respect of the following matters,
namely,—
(c) the result of investigations made under section 13;’
Section 13 of the Patents Act stipulates “Search for anticipation by previous publication and by prior claim”. This section states:
“Section 13(1) The examiner to whom an application for a patent is referred under section 12 shall
make investigation for the purpose of ascertaining whether the invention so far as claimed in
any claim of the complete specification—
(a) has been anticipated by publication before the date of filing of the applicant’s
complete specification in any specification filed in pursuance of an application for a
patent made in India and dated on or after the 1st day of January, 1912;
(b) is claimed in any claim of any other complete specification published on or after the
date of filing of the applicant’s complete specification, being a specification filed in
pursuance of an application for a patent made in India and dated before or claiming
the priority date earlier than that date.”
Now let us see what does Section 13(2) of the Patents Act say:
Section 13(2):
“The examiner shall, in addition, make an investigation for the purpose of ascertaining, whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.”
The above Sections say: once a new patent application is placed before an Examiner of Patents & Designs, the main job of an Examiner includes:
1. to examine the documents of the patent applications in respect of its technological contents keeping an eye on the legal stipulations;
2. to ‘investigate’ the patent application by way of a “Search for anticipation by previous publication and by prior claim” (Section 13 of the Patents Act 2005).
In view of the entire Patents Act 2005 and the stipulations in Patents Rules 2006 any person who is a skilled-in-the-art would state that the actions of the authorities of the Indian Patent Office is highly illegal. Their actions show that they have violated the provisions stipulated in the above sections of the Patents Act 2005 (Amendments). I am sorry to say that perhaps Mr. CGPDTM or his officers have forgotten that they are not legislatures! Why this MoU has been signed by way of violating the stipulations of the Indian Patent Act? Sumathi, could you investigate this matter please?