Trying to make sense of TKDL’s access policy – Why is the Indian Patent Office being ignored?


The Traditional Knowledge Digital Library(TKDL) which we have often blogged about on this blog for reasons that are good, bad and ugly, is an ambitious project, by CSIR & the Ministry of Health, Govt. of India to digitize and compile various traditional knowledge resources in India, into a digital searchable database.


Although the TKDL has been rightly accused of over-exaggerating claims of its effectiveness, in certain cases, there is no denying that it has been very useful in opposing at least a few bad patents.


However the strange part of the TKDL story is that only foreign patent offices are allowed to use TKDL or to be more precise only the European Patent Office & the U.S. Patent Office. For some reason, which is impossible to fathom, the Indian Patent Office, which is a part of the Indian Government is not allowed any access to the TKDL. In comparison, not only does CSIR sign access agreements with the EPO & the USPTO to access the TKDL, it also provides search reports to both these offices, based on the TKDL, free of cost.


We are therefore living in this absolutely absurd situation where CSIR has deemed it necessary to protect only the Americans & Europeans from bad patents. Indians for some reason are second class citizens who do not require to be protected from bad patents. Just have a look at the TKDL’s new & improved website – they mention only European, American & Canadian patents which they have managed to stall or amend. There is not a single Indian patent mentioned over there because CSIR does not offer the same services to the Indian Patent Office.


What make the situation even more absurd, if it could get any more absurd, is that some of the patents which CSIR & TKDL have opposed in the U.S. & Europe, have also been filed in India and in all likelihood will proceed to grant because TKDL does not provide the Indian patent office with the same services that are provided to the USPTO & the EPO.


I’ll discuss just three examples from the list of patent victims made available on the TKDL website:


(i)    Avesthagen Ltd., a Bangalore based company, filed for a European Patent, bearing No. EP2152284on the 29th of June, 2007, for a “synergistic ayurvedic/functional food bioactive composition”. After an adverse search report from the EPO, part of which was based on TKDL references and an independent intervention by the management of TKDL, Avesthagen Ltd. did not reply to the EPO therefore resulting in a deemed abandonment on 6th January, 2012. Now an interesting fact is that the EP application claimed its priority from an Indian patent – 1076/CHE/2007. The Indian application has gone through one round of examination and the patent examiner raised several objections including prior art but has made no reference to the TKDL because he has no access to the TKDL. The patent agents for the patentee, presumably on instructions from the patentee, do not seem to be inclined to abandon the patent application in India because on 24th January, 2012, i.e. about 18 days abandoning their EP patent, the patent agents in question filed a reply to the Examination Report of the examiner defending the claims of the original patent application and seeking a grant of the patent.

(ii)  The second case is EP EP1933625 filed by Laila Nutraceuticals a Vijayawada based company for a “Process for producing enriched fractions of Tetrahydroxycurcumin and Tetrahydrotetrahydroxy-Curcumin from the extracts of Curcuma Longa”. The TKDL website claims its third party intervention, resulted in Laila Nutraceuticals amending their claims on the 27th of April, 2011. The desi counterpart – Indian application 881/CHENP/2008 is still awaiting examination before the Chennai Patent Office. But it is unlikely that the same objections raised before the EPO, will be raised by the Chennai Patent Office for the simple reason that they don’t have access to the TKDL database.

(iii)  The third case is US Patent Application No: 20100203078, also filed for by Laila Nutraceuticals, this time for “Anti-obese compositions containing holoptelea integrifolia extracts”. The TKDL website claims that the USPTO ordered amendments of the claims based on the TKDL evidence. This application too is proceeding in India as 0926/CHE/2010. While this application is awaiting examination before the Indian Patent Office, it is unlikely that this application will run into the same rough weather as it did before the USPTO for the simple reason that the Indian Patent Office does not have access to the TKDL.


Conclusion: It has been almost three years since the USPTO and EPO were given access to the TKDL. Within these three years, the TKDL has claimed significant success in its mission to prevent patenting of TK before these offices. But the question remains as to why exactly the Indian Patent Office has not yet been given access to the TKDL especially when it is the Indian Government that has paid for the entire database. We must be the laughing stock of the patent world – only in India will one government institution discriminate against another government institution and in favour of foreign institutions. If anything, the TKDL is desperately needed in India of all countries because our desi companies have the best access to the TK either through formal or informal mechanisms. It is highly likely that these companies, like Laila above, are researching and filing for patents based on information which must be deemed as traditional knowledge. When is the CSIR going to give the IPO access to the TKDL? 

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Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

36 comments.

  1. Avataranony - mouse

    Sensational!!! Anybody reading this article will be furious with the Indian authorities for not giving the same kind of treatment to Indian govt. agencies as opposed to foreign agencies.

    Behind all this sensationalism and writings, thereby luring your readers into believing something which is not correct and not backed up by hard facts is not accepted from a blog like spicy ip.

    I base my comment on a listing provided by you in your own post, which mentions that the Indian Patent office has also been granted access to TKDL.

    see entry below:
    Entry no. 44
    Access to TKDL database granted to CGPDTM (Indian Patent Office) under Access Agreement
    July, 2009
    CSIR

    I hope next time we will see reports which are thorough and backed by strict facts and not mere assumptions!!!

    Regards,
    anony – mouse

    Reply
  2. AvatarPrashant Reddy

    Hi Anonymouse,

    TKDL can state whatever it wants to on its website. Fact of the matter is that the IPO does not have operational access to the database. I’ve spoken to patent examiners who have confirmed the same.

    Besides, have a look at the TKDL website, why haven’t they mentioned a single Indian patent which has been revoked or cancelled because of the TKDL. This when the TKDL clearly mentions around 75 Europeans patents and around a dozen USPTO patents which are modified because of TKDL.

    That is more than enough evidence to substantiate my claims.

    Regards,
    Prashant

    Reply
  3. AvatarRamachandran

    The fact remains that SpicyIP has already reported TKDL giving access to Indian Patent Office. It is easy to write a blog to criticise something, but it takes effort to check ones facts.
    But since this blog is written by lawyers, one may excuse selective usage of facts and colored reporting.

    Reply
  4. AvatarAnonymous

    Prashant,
    Thank you once gain for raising the issue once again with the instances. I believe you that the Indian Patent Office must not have been given access to the TKDL particularly when you say that you have spoken to examiners who have stated so. It is a pathetic situation that our own country men (the concerned officials who are likely to prove its worth) are not able to have access to the TKDL.
    However, I do not agree with you that the Indian Patent WILL go through only because the Indian patent Officials do not have access to TKDL. AS per Section 8(1)(b) of Patents Act, one has to keep the Indian Patent Office updated with respect to the applications filed in other countries. Besides as per Section 8(2) even examiner can ask for the details about the position in other countries including the examination reports etc. For this See Chemtura case.
    10/4/2012

    Reply
  5. AvatarPrashant Reddy

    Hi Anon – I had thought about the Section 8 argument. In the Avesthagen case, for instance, a Form 3 was filed before the Patent Office which merely informed the Patent Office that the EPO patent was abandoned. The question thus would be whether Section 8 requires disclosure of foreign patents when the same have been abandoned? Would the Chemtura judgment apply to abandoned patent applications?

    Regards,
    Prashant

    Reply
  6. AvatarRamachandran

    Prashanth,
    Normally in such reporting you would have collected facts. Did you ask either CSIR or Indian Patent Office, formally or through RTI if they have entered into TKDL access agreements. I am sure you would have done, rather than relying on hearsay evidences.
    Ramachandran

    Reply
  7. AvatarAnonymous

    Dear Prashant,
    You are wrong on facts. I am a Patent Examiner in Indian Patent Office. All Examiners including me are having full access to TKDL under TKDL Access(Nondisclosure)Agreement with CSIR since July 2009. In fact five months before USPTO got the Access.

    Reply
  8. AvatarPrashant Reddy

    Dear Anon,

    Thank you for the clarification, I guess I got the wrong information. But why is that the TKDL website does not mention a single IPO patent struck down because of the TKDL. They list almost 70 EPO patents which have been struck down thanks to the TKDL.

    Also I would be grateful if you clarify whether the IPO receives TKDL based search reports from CSIR, free of cost, in the manner with which they provide EPO.

    Thanks,
    Prashant

    Reply
  9. AvatarD Das

    Prashanth,
    Please clarify if you have obtained official clarification from CSIR or Indian Patent Office before making the claim which now you seem to be accepting as wrong.

    Reply
  10. AvatarPrashant Reddy

    Hi Das,

    I’m not clarifying that I’m wrong, I’m clarifying that I was given wrong information. Besides, I’m not wrong about CSIR not providing IPO with TKDL based search reports. CSIR still has to account for why they provide the EPO with such reports while ignoring the IPO. Why discriminate against the IPO. CSIR also needs to explain why its website does not provide any statistics on the IPO. This raises the suspicion that for some explained reason the Access Agreement between the TKDL and CSIR has not been effectively operationalized. What else explains the absences of any IPO related information on the TKDL website?

    Regards,
    Prashant

    Reply
  11. AvatarD Das

    Hi Prashanth,
    May I refer you to your actual claim in the blog, where you have stated:
    the Indian Patent Office, which is a part of the Indian Government is not allowed any access to the TKDL.

    So, please do not claim that you did not make a factual error in reporting, which is against basic journalistic ethics. Also, you should have checked with the concerned organisations before making such serious allegations, which is a standard journalistic practise, as these organisations have no way of refuting your claim.

    Reply
  12. AvatarPrashant Reddy

    Hi Das,

    Of course the TKDL can refute our claims – we’ve carried clarifications from CSIR and other organizations before. I haven’t yet received any official communications from TKDL stating that I’m wrong. Either they don’t read the blog or aren’t bothered about the contents therein.

    But I reiterate, my basic claims still stands – the IPO does not get the same TKDL based search reports as is the case with the EPO. You haven’t yet provided any information on why the CSIR is discriminating against the IPO while giving the same services to the EPO for absolutely free? YOu seem to be an insider – what is the reason for this discrimination?

    Regards,
    Prashant

    Reply
  13. AvatarPrashant Reddy

    Das – About my ‘journalistic ethics’, I direct you to this reply I received from CSIR, in response to a RTI application. https://docs.google.com/file/d/0Bxi2TzVXul5ZZlFfVnFjYWhTOXFCdUo0SDRlNFdNZw/edit?pli=1

    They very clearly state that only international patent offices are given access and further going by the lack of information on the website of the TKDL regarding the IPO, I’m going to hazard a guess that the IPO does not have operational access to the TKDL.

    Prashant

    Reply
  14. AvatarAnonymous

    Dear Prashant,
    We do receive at Indian Patent Office Pre-Grant Opposition under Section 25. (1) of Indian Patent Act of 1970. Several such Pre-Grant Oppositions have been received at our end. Also please refer one such at
    http://124.124.193.235/applicationstatus/dublicateExamLetter.aspx?ID=1959%2fMUM%2f2008

    I have checked the EPO site, TKDL there does not file any free search report, rather they make submission under Article 115 of EPC titled as Third Party Opposition which is same as Pre-Grant Opposition of Indian Patent Act. You may know Patent system permits opposition at pre-grant stage all over the world and these oppositions helps the interested party contest the claim of applicant without lawyer, or any filling fee also help the patent office in enhancing the quality of granted patents.
    TKDL seems to have mastered the art of pre-grant opposition to protect India’s Traditional knowledge without any cost. They seem to be doing at several international Patent Offices under respective Patent act also at CGPDTM. You search our site you will get many such submissions which you erroneously refer as free search report. Also number of TK based applications in Indian Patent Office is likely to be less since Indian Patent Act does not permit patent based on Traditional Knowledge which is not the case with other countries. I suggest you visit us at Indian Patent Office,we will help you to learn more about our system & procedures so that your factual blogs would be factual.

    Reply
  15. AvatarAnonymous

    Dear Prashanth,
    CSIR was not wrong in its response. Remember long back Indian Patent Office was designated as International Search Authority (ISA) under PCT. Therefore you should have checked specifically with another RTI either at CSIR or at Patent Office now the entire story of yours look to be a piece of fiction. I am sure you never wanted that in the first place. Good luck next time

    Reply
  16. AvatarAnonymous

    Why you think CSIR or Patent office would respond to your blog, you are not Times Now or Hindustan Times, most of the times comments and stories are based on here-say or half baked RTI where entire intent appears to be criticizing even Nationalist initiatives of GOI in order to gain some eyeballs for your self

    Reply
  17. AvatarAnonymous

    are you saying your entire blog is based on guess.Since entire issue you have raised was lack of access to Indian Patent Office

    Reply
  18. AvatarAnonymous

    Dear Prashant,
    We do receive at Indian Patent Office Pre-Grant Opposition under Section 25. (1) of Indian Patent Act of 1970. Several such Pre-Grant Oppositions have been received at our end. Also please refer one such at
    http://124.124.193.235/applicationstatus/dublicateExamLetter.aspx?ID=1959%2fMUM%2f2008

    I have checked the EPO site, TKDL there does not file any free search report, rather they make submission under Article 115 of EPC titled as Third Party Opposition which is same as Pre-Grant Opposition of Indian Patent Act. You may know Patent system permits opposition at pre-grant stage all over the world and these oppositions helps the interested party contest the claim of applicant without lawyer, or any filling fee also help the patent office in enhancing the quality of granted patents.
    TKDL seems to have mastered the art of pre-grant opposition to protect India’s Traditional knowledge without any cost. They seem to be doing at several international Patent Offices under respective Patent act also at CGPDTM. You search our site you will get many such submissions which you erroneously refer as free search report. Also number of TK based applications in Indian Patent Office is likely to be less since Indian Patent Act does not permit patent based on Traditional Knowledge which is not the case with other countries. I suggest you visit us at Indian Patent Office we will help you to learn more about our system & procedures so that your factual blogs would be factual.

    Reply
  19. AvatarPrashant Reddy

    haha! Let’s not fool ourselves into thinking that all you Anons are neutral third parties with no stake in the TKDL project. Its quite obvious from where these comments are coming.

    And International Search Authority is different from International Patent Office. The CSIR is quite clear that only international patent offices are given access.

    And besides all you chaps are avoiding my main question: this is the third time I’m raising it – Why isn’t CSIR providing the IPO with TKDL based search reports when it is providing the EPO with the same and that too free of cost.

    Let’s see whether you chaps can come up with an answer atleast this time.

    Prashant

    Reply
  20. AvatarPrashant Reddy

    Hi Anon (11:30)

    For some reason you got into our spam folder. I just released the comment.

    Thanks for this link – its most useful. Would you have a copy of the pre-grant opposition filed by CSIR? I can’t find it on the IPO website. It would help clarify whether CSIR has filed this based on TKDL.

    More importantly why is this not listed on the website of the TKDL?

    Prashant

    Reply
  21. AvatarAnonymous

    Dear Prashant,
    You are crazy! TKDL is listing on its website only the Cancelled/ Withdrawn/ Amended cases. Case referred to is under process at our office. By the way there are several submissions similar to EPO made by TKDL at our office. So, all the issues which you raised were non issues. I hope either you will come and speak to us in our office next before you put up a story on Indian Patent Office. It will do good to you and your blog. I sincerely believe now that you do need practical training in Patent systems and procedures after that quality of your blog is likely to get improved by an order of magnitude. Incidentally only an International Patent Office can become International Search Authority (ISA) and only few become, out of 170 plus. International Patent Offices, only 17/18 presently, have been designated as ISA which include EPO, USPTO, JPO, CGPDTM, China, South Korea etc.

    Reply
  22. AvatarAnonymous

    After the above comment from Indian Patent Office. I do hope next blog of yours will get posted only after due diligence else you may destroy the credibility of a very useful blog like spicy-ip I hope Shmshad would intervene before you post another post based on your extremely superficial knowledge of TK,Patent and IP system as has now been conclusively established

    Reply
  23. AvatarAnonymous

    He has admitted in his last post on CSIR ( titled -why is it difficult for csir to be transparent) that he relies on hearsay to come to conclusions. So forgive him for he does not know what he taps away on his keyboard with an anti- government sentiment in his brain. None else is right except Prashant Reddy!!

    Reply
  24. AvatarPrashant Reddy

    Hi Anon,

    haha! Thanks for that lovely comment – so tell me in the last 3 years, TKDL has not found a single IPO patent application which has been invalidated due to the TKDL? Not a single one in India but 75 in the EPO?

    Seriously, do you think anybody is going to believe that.

    Your argument on only International Patent Offices becoming International Search Authorities is slightly confusing – what then in your opinion are national patent offices?

    Regards,
    Prashant

    Reply
  25. AvatarD Das

    Hi Prashanth,
    I was following your blog with some interest, till now, I should say. But from the above discussion it seems apparent that your statements are based on hearsay and on any evidence. If you are writing blogs based on ‘hazard guess’, it will only reflect on the journalistic ethic of spicyIP. With this background, you need not wonder why IPO or CSIR is not reading your blogs. With such basic errors in reporting, with SpicyIP having no process of verifying the claims made in such open forum, more serious people will stop reading your blogs.

    Reply
  26. AvatarPrashant Reddy

    Hi Das,

    I provided you with a link to an RTI reply from CSIR which claims that only ‘international patent offices’ have access to the TKDL. How is that hearsay evidence?

    And besides, you have once again evaded my main query, where is there any evidence of CSIR submitting TKDL based search reports to the IPO like they do for the EPO? This is the fourth time I’m asking you this question.

    As for CSIR & TKDL not reading this blog, I think the comments, mostly negative, that I get on any post related to CSIR, is more than enough evidence that some people at CSIR & TKDL are spending way too much time reading SpicyIP. 🙂

    Regards,
    Prashant

    Reply
  27. AvatarAnonymous

    I am posting two of your comments contradicting each other in past few days it self for you to decide where you are correct or wrong.
    “Of course the TKDL can refute our claims – we’ve carried clarifications from CSIR and other organizations before. I haven’t yet received any official communications from TKDL stating that I’m wrong. Either they don’t read the blog or aren’t bothered about the contents therein. ” and “As for CSIR & TKDL not reading this blog, I think the comments, mostly negative, that I get on any post related to CSIR, is more than enough evidence that some people at CSIR & TKDL are spending way too much time reading SpicyIP. :-)”
    Also I suggest you do an RTI with Indian Patent Office to seek answer whether they have an operational access to TKDL and since when and be honest to post that on your blog and have the modesty to accept facts

    Reply
  28. AvatarPrashant Reddy

    Well initially I was under the impression that the people at TKDL do not read SpicyIP but after the number of comments crossed the 20 mark it became quite obvious as to where the comments were coming from.

    Prashant

    Reply
  29. AvatarD Das

    Hi Prashanth,
    The very fact that you have censored the earlier comment I posted which discussed translucency from SpicyIP shows that you are not practicing what you preach!

    Reply
  30. AvatarAnonymous

    Why do’nt you read your current comments with the introductory comments on this post “The Traditional Knowledge Digital Library(TKDL) which we have often blogged about on this blog”
    How come you did not get the wisdom earlier that some people in CSIR spend lot of time reading your blog and all negative comments to you would come from CSIR. Such conclusions can only be drawn if we live in our own world and excepting us every one else is wrong

    Reply
  31. AvatarAnonymous

    I think it is not necessary or obligatory on the part of CSIR to send report for each and very case of IPO on basis of TKDL. Basically CSIR is a serious research organisation. It is the duty of IPO Examiner to do proper search also using TDKL. If IPO has not searched TDKL, CG should get clarification from the examiner.

    Reply
  32. Avataranonymous

    Hello!
    Iam a college going student.
    Can anyone tell me if the knowledge of TKDL is available for common people like us?
    If it is available then from where should we get its access?

    Reply

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