March 2012: Controller’s decisions at the IPO


In the month of March 2012, the Controller’s at the IPO did not grant a single patent in actions before them; 23-0.  Although, 15 decisions were issued this month relating to section 3(k), we are unable to provide our case specific comments.  This is because none of these decisions (3(k)) is more than 2 pages with the operative text in a single paragraph.  These 15, 3(k) decisions came from a single Assistant Controller.  All these 3(k) decisions have a common theme where the Controller denies the applicants, a patent, in a single common paragraph.  This common paragraph has the seemingly magical words: “I am of the opinion that the method as claimed in independent claim …..comprising the steps of ………relates to the method wherein the steps of flowchart, have been defined in the form of algorithmic steps.”  There is no scope for analysis here, as is a single conclusive statement is given without any background-claims-or discussion of the prior art.  
In addition, our readers may face problems in accessing the files directly from the patent office servers.  However, these files may be accessed from a permanent link here.  During the previous Controller’s era, at least the files were accessible.  Now it seems that the links do not work – Does the patent office wishes that nobody has access to these files?  Our readers may lodge a complaint against this issue here.  In your complaint, please do mention that you want the patent office to make data accessible online in a proper format so that links work and an individual does not have to open a new window for each decision.  
In my opinion, these two page decisions from a single controller, issued within days of each other, would not be able to withstand the test of scrutiny.  When the applicant makes a payment to the patent office for an application-the patent office has a duty to inform the applicant about the  rejections, with reasons. If there are no reasons mentioned, it is official highhandedness and can be appealed for judicial review.  See Siemens Engg. & Mfg. Co. of India Ltd. v. Union of India, AIR 1976 SC 1785 holding a reasoned order is an essential requirement for the delivery of justice.  The absence of reasoned orders and the proper maintenance of records adds to the burden of courts who are later called on to examine such decisions.
Application #

Applicant

Decision

Section /Issue

Controller

RECKITT BENCKISER AUST.

Refused

Double patent

SP Subramaniyan

MITSUBISHI CHEMICAL

Refused

2(1)(j)

Anoop K Joy

CANON KABUSHIKI KAISHA

Refused

2(1)(j), 10(5)

Anoop K Joy

DEDINI S/A INDUSTRIAS

Refused

2(1)(j), 10(4)

Rajesh Dixit

VOTEHERE INC

Refused

2(1)(j), 3(k)

V Palaniswamy

NIPPON STEEL CORP

Refused

2(1)(j), 10(4)

V Palaniswamy

MICROSOFT CORPORATION

Refused

3(k)

V Palaniswamy

MICROSOFT CORPORATION

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

NAGRAID SA

Refused

2(1)(j), 10(4), 3(f)

V Palaniswamy

FORCE COMPUTERS, INC

Refused

Abandoned

V Palaniswamy

ERICSSON

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

CITICORP CREDIT SERVICES

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

PricewaterhouseCoopers

Refused

2(1)(j), 3(k)

V Palaniswamy

MICROSOFT CORPORATION

Refused

2(1)(j), 3(k)

V Palaniswamy

VOTEHERE INC

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

FLEXTRONICS USA

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

RESEARCH IN MOTION

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

ZTE CORPORATION

Refused

3(k), 10(4)

V Palaniswamy

SPINVOX LIMITED

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

QUALCOMM

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

AMWAY CORPORATION

Refused

2(1)(j), 10(4), 3(k)

V Palaniswamy

SUNY, NY

Refused

3(k), 10(4)

V Palaniswamy

TEVA PHARMA

Refused

Abandoned

Shah Alam

UNIV. CONNECTICUT

Refused

Withdrawal

Shah Alam

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

10 comments.

  1. Anonymous

    Mr. Rajeev: You are right-I cannot access these decisions on clicking the link provided. I had to go the patent office website to look whether they were available. And as you said, there are available one click at a time.

    Reply
  2. Anonymous

    Mr. Rajiv, please be happy that atleast some decission is given. Its not fair to expect reasoned decissions for the kind of motivation office is providing for the well qualified professionals. Even the office clerks gets promotions, honorariums but not well qualified officers. Show ur greivances on the govt system rather than individual officers.

    Reply
  3. Anonymous

    hi, i strongly feel that section 10(4) is more than sufficient to refuse any patent, but V.P used 3(k), 2(1)(j)….many agents think that controllers are illiterates, this refusal should continue then only they respect controllers

    Reply
  4. Anonymous

    Mr, Rajiv, patent application fee goes into the govt kitty not for the patent office improvement thatswhy blame govt system rather than officers who are working hard in the de-motivated environment.

    Reply
  5. Kshitij

    [email protected]:48 PM – Your reasoning is so infantile. You mean to say that the applicant who has paid money to the patent office to examine his patent application should be happy that the patent office has at least “examined” the patent application. Thank you, but no thank you for the charity.

    Rajiv – I was just wondering. Are there any recourse available to a patent applicant to claim the damages caused due to delay in grant of a patent application by the patent office?

    Reply
  6. Kshitij

    @ Anon 10:11 AM – So you mean to say that the officers should incompetently handle the patent applications because the patent office does not motivate them enough to do their jobs? This knowing that an inventor who has sweated out for so long for his invention (in many cases in absence of any govt. support), but, he should suffer because the patent office is not giving you what you want? This is too narrow a view, please step in the shoes of an inventor and try to see things from his perspective.

    Reply
  7. Shankar

    The Patent Office represents public interest. The Patent Act furthers public interest by permitting inventors to obtain a monopoly over their invention and thereby society benefits through use of the invention. Patent office officials must remember that they are a quasi judicial authority representing public interest in the discharge of their duties. It is incumbent on them to provide reasoned responses in their office actions. Thorough well reasoned office actions must be the norm. A poorly rendered decision not only denies justice to the applicant, but society at large also loses.

    It is not for the examiner to take a grudge against every applicant and say “when I am there let me see how this fellow gets a patent”. Every official in power does have discretion and leeway in exercising those powers, but the exercise of powers must be tempered by the underlying statutory (and public) intent.

    Reply
  8. Rajiv Kr. Choudhry

    Kshitij: I think that before our law makers make damages available to patent applicants for delay in grant, they should give damages to all other categories including criminal, property, land, and all the other cases languishing in our court systems for decades.

    Anon:10:11AM: I agree that fees goes to government kitty. But that is no reason why a public officer should deviate from adequately performing his duty.

    As an example, consider a tenant evicted from a property by a judicial order without reasons-would you consider that order to be valid?

    Reply
  9. Anonymous

    Kshitij,
    You are wrong when you ask if there is any recourse available to a patent applicant to claim the damages caused due to delay in grant of a patent application by the patent office. If it applies to patent office then it should apply to Trade Mark Office and for that matter to each and every Government Office. The laws are so made that the duty is fixed on the Citizens that the Citizen has to do such and such thing by such and such time. But normally there are no limits/deadlines mentioned for the beaurocrats for the same. When one studies law, he/she is taught a lesson “Kind can do no wrong”. In Government offices the officials are Kings. The person having your file is the King as everything happens with the file. If the King had delayed, it is not a wrong. However, if you happen to cross the deadline of filing form 18 or for that matter any other thing, you are doomed. You loose your valuable right to the patent. You are supposed to know the law. You should not believe/depend upon the guidelines issued by the office itself. I am referring to the WIPOP guidelines with respect to the filing of Form 18 whereby the period of 48 months has been referred as whichever is later. This was clearly mentioned in the guidelines available on the net to be seen by everyone. But the Controller has held (ever after the Hon’ble Delhi High Court having stated that there was definitely a confusion), that the agent should know the law and should not depend upon the guidelines which are against the law. The agent is expected to read the instruction allegedly mentioned on the CBR with respect to the foiling of form 18 within 48 months, but to ignore the guidelines.

    Admittedly the guidelines mentioned “which ever is later” till 10th Nov., 2011 (even after the Hon’ble Delhi High Court had delivered its decision), yet the decision has been given against the patent applicant. The question is why at all should you publish guideline if you do not have to follow. Or why should you publish wrong guidelines and then expect the agent not to read/follow those guidelines.

    I do not appreciate the reasoning given by an anonymous with respect to the blaming of Govt. system rather than officers who are allegedly working hard in the so called de-motivated environment. If the environment if demotivated, better you leave the job.
    6/4/2012

    Reply

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