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April 2012: Controller’s decisions at the IPO


April was comparatively relaxed at the Controller’s offices as compared to March.  Eight decisions were issued and three applications were allowed.  What is most interesting this month is the manner in which applications were allowed or refused.
For example, one allowed case states: “Agents to the applicant has discussed/explained at length and reached to a conclusion to further amending his application and come back with the retyped pages in shortest possible time.  Applicant’s agent has filed such written response and amendments ….It is opined on final amendments and written submission that the application now meets all the requirements of the Act and found to be in order for grant.  As such application is proceeding for grant.”
One refused case provides: “The written response and further amendments submitted by the applicant’s agent in view of last communication of this office has been considered and opined as below:  1. There seems no novelty/inventive step in selection of aqueous vehicle as such.  2. Response to objection related to the requirements of section 3(d) is not satisfactory to the requirement of the Act. …. In view of the existing objections and failure of the applicant to comply them, the instant application does not meet the requirements of The Act and is hereby refused to proceed for patent…”
It seems that brevity is the preferred flavor for decisions this month. But given that these decisions can be used for citation in other cases/or to Examiners, they lack the reasoning and logic that should be included in a Controller’s decisions.  A two page decision that does not include a substantive reasoning does not do justice to the applicants.  It also does not do justice to the public as they are deprived of the reasoning for allowance or refusal.
APPLICATION # 

APPLICANT 

Decision 

Section/Issue 

CONTROLLER 

KNEADS MUST Ltd. 

Refused 

Inv. Step 

C N Shashidhara 

SAMSUNG ELECTRONICS 

Refused 

Divisional 

Nirmalya Sinha 

STELLAR PHARMA INC 

Refused 

3(d) 

Dr.S.S.Singh 

BOEHRINGER INGELHEIM 

Refused 

Abandoned 

Shah Alam 

UOP LLC 

Refused 

2(1)(j) 

Shah Alam 

KERNEOS 

Allowed 

2(1)(j)/(ja) 

Dr.S.S.Singh 

BAYER SCHERING 

Allowed 

2(1)(j)/(ja) 

Dr.S.S.Singh 

LML LIMITED 

Allowed 

2(1)(j) 

P S Rao

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).

8 comments.

  1. Anonymous

    dear Blogger
    Can you let us know how do yo track the decision especially refused one

    Regards
    anon

    Reply
  2. Anonymous

    Dear blogger,
    Is is not sufficient reason of refusal if the reasoned objections are existing and the Applicant is no more interested to pursue the case? Do more number of pages are essential requirement for the reasoned order. With due respect to you it is noted that Hon’ble superior Courts are appropriate fora to judge the decisions.

    Reply
  3. Anonymous

    Such comments of the blogger seems to be stepping of feet in to the shoes of hounarable judiciary.

    Reply
  4. Anonymous

    Such comments on the decisions seems to be stepping feet in to the shoes of Honorable judiciary

    Reply
  5. Rajiv Kr. Choudhry

    Dear Anonymouses: I have not said that there should be reasoning for those orders where there was an abandonment.
    There is a genuine need, and it is fair that reasons be given in cases where allowance/refusal is given on actual grounds.
    Take a look at office actions from across the world: US/EPO/ Japanese/Korean/Chinese..office actions…they include reasons for allowance or refusal.

    Reply
  6. Anonymous

    Two page decisions are nothing but copies of the report submitted by examiner to controller. As it involves a good deal of effort and technical knowledge to understand the application, controllers lacking such skills simply copy the objections raised by examiner and write their decisions.

    Reply
  7. Anonymous

    There are many instances where serious objections raised by the examiner are waived off by controllers after the hearing and a patent is granted. The public has a right to know what transpired between the controller and applicant during the hearing and on what basis the objections were waived off. There is nothing confidential about this transaction. As hearing officers, controllers have to provide sufficient reasons before both grant or refusal of a patent.

    Reply

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