In a recent decision, the Intellectual Property Appellate Board (“IPAB”) has criticized the Patent Office for a shoddy decision where the Controller had copy-pasted excerpts from two distinct publications; In one instance even the font, and spacing was the same as used in the original publication. The original case can be seen here for application number 2254/DELNP/2005.
Quotable Quote: “This is not how an order shall be passed by the Patent Office. The Controller has the duty to examine the claims and test them for patentability.”
The issues that this case raises are not new. Prashant, in a previous post had emphasized on sharpening the legal skills of our Controllers. Shamnad, too, in multiple posts has discussed this same issue. And, my take on this is on similar lines of Shamnad and Prashant. In one of my previous posts, I had discussed that, “[T]hose cases where the Controller is just agreeing to formal objections raised during the FER by Examiners, should be considered by the Examiners only. There is no value addition by Controllers spending time on those cases.”
This fact that Controllers write decisions where mere formal objections are adjudged, highlights two possible problems. One that Controllers are overworked, and second, Examiners too, are overworked! The reason that Examiners are overworked is because of the pending pipeline of applications. The reason that Controllers are overworked is because of they have to give decisions for every case where formal objections are there.
This system may discourage Examiners (Controllers giving decisions for formal objection cases). Issues that are raised before examiners, and require a mere cursory check to ensure compliance with the FER, should be dealt with the Examiner who issued the FER and not the Controller. A form or template like the one used in almost every other major patent office (USPTO, EPO, KIPO, CIPO) should also be used. See one my previous posts on having the usefulness of a template.
Another fallout of this particular way of dealing with formal objections, is that Examiners know that all the work in the particular case has already been done, but the credit of dealing with the case goes to the Controller. My personal opinion is that whatever may be the reason behind it, the implications on the morale of the Examiners has not been on the table at all.
I am surprised to read to comments of IPAB bench consisting of a technical member along with chairman, obviously this comments must have originated from the member technical, who himself had never passed pre-grant or post grant order in his whole career as firstly as Assistant Controller later as Deputy controller while working in the Patent office, who was simply promoted out of turn from Information desk officer of desk of non obscure IP institute of GOI to directly as Assistant Controller in Indian patent office and in rest of his career he has been buttering DIPP honchos in Udyog Bhawan.
If in such is a scenario, how you expect an honest hardworking person to work diligently with his full competency when before his eyes many incompetent, persons are promoted to high pedestal but in actual sense they do not deserve it. So basically this is the norm of Indian work culture that undeserving people are promoted by passing honest and hard working people, the undeserving carry a sole motto “to not to work “not because they do not want to work but actually they do not know the work which is assigned to them rather they do not deserve to sit on that chair but still they are selected, second motto is you work, than naturally mistakes are bound to happen but if you don’t work nobody has an opportunity to observe your mistakes, thereby keeping unblemished career graph.
Because at the time of their working hours, in place of hard work actually they work solely to lick palm of their immediate seniors or bosses. As in India most of the cases lot of undeserving people reach to a pedestal / position, which they did not deserve and their immediate seniors ignore hard working honest juniors rather in place of promoting them they are burdened with more work ( to complete left unfinished work of palm licker). Hence due to prevailing culture of palm licking most of the honest and hard working juniors are also joining the rat race of palm licking as they know their hard work will not take them too far but palm licking can take them too far place, which they had never dream off.
This is the norm of day in India firstly do not work and while sitting idle in move to senior office cabin order tea and sing a song which your boss likes and later in hush –hush tone murmur in officer ears to getting an opportunity to get close to him or her and scuttle the career and work of other honest hard working officers later start licking your immediate officer or boss palm.
For example so it be IPAB, Patent department or any other institution, tribunals in India, there are thousands of examples, which nobody knows, the sycophancy is a norm of the day in India, so naturally those who work hard, honestly but when see bleak future career graph than certainly they hang out their boots and start ignoring work altogether, joined rat race of sycophancy as they there is no other remedy to reap undeserving benefits.
So my comments may not be read or linked with this incident but will be read and be comprehended in whole context, as this will go on continuously for many centuries in India, as we as Indian citizen cannot get rid of this virus which has been left by Britishers and the virus was kept remain untreated by our forefathers, so we have live and die with this virus.
The decision and observations of the IPAB are welcome. In fact these kinds of observations and resentment should be reflected in the orders/judgments of the superior Tribunals and courts in order to be deterred for the persons at the helm of affairs at the initial stages.
In fact I am personally of the opinion that there should be some penalty imposed personally on the officer/judge concerned, if it prima facie shows that the decision has been wrongly given knowingly thereby putting the public/litigant to a great loss in the shape of money, time and harassment. I know this cannot be done. However, at least the strictures can be passed. If nothing of this kind happens, the officer concerned gets encouraged and repeats the mistakes (read blunders) knowingly, saying that there is no accounting. ACCOUNTING OF THE ACTS DONE/NOT DONE IS VERY VERY IMPORTANT.
Dear Prof.Baseer ,
Poor article done without any homework !
You always try to show some upper hand by even trying to mandate how patent office/how controllers will work etc.Surprisingly in this article you have even tried to create confusion in the minds of Examiners in terms of imposing the word credit-which shows your deliberate attempt to break the system in the Patent Office as per the Act and creating disturbance in governance and quasi-judicial function.
.Here nobody works for credit but rather to keep the sanctity of the Patents Act.
First time it is also observed that you have written an article without even doing your homework.The major problem was the concerned Controller was of Mechanical stream !!!
Why IPAB is silent in this matter?
why you are silent Prof Baseer in this issue ? Hope it is not necessary to point you out which field the invention belongs !!
Anon@11:19AM: Because I wrote this post, please direct your comments to me rather than at Prof. Basheer.
Your conclusion seems to be a result of haphazard reading, twisted reasoning and logical fallacies.
Is it necessary to tell you that there should be no plagiarism in decisions, and they should be based on the actual facts.
As mentioned above, how can a controller with a mechanical engineering degree understand intricacies of Chemistry [3(d)] and write a decision on that. Many controllers in the patent office supervise examiners of different subjects and therefore work with no idea of whats going on.This is making a mockery of the subject-based group system and may be one of the reasons for copy-paste decisions and undeserving patent grants.
Anon @10:12AM: I believe the issue is not whether there is expertise on 3(d) or not, but the issue is whether a fair hearing has been given.
This falls under the principles of natural justice, rather than domain specific expertise.
Hence we keep raising this issue: Develop the writing skills of the patent office.
What do you think the result in this case would have been if there was no copy paste? I am sure that it would not have gone to this
Rajiv,How can the patent office develop its writing skills when they can read,speak, write fluently only in their mother tongue. In Delhi patent office I have rarely heard English being used. The matter is the same in other branches too.
does any one have idea regarding why the term of different ipr differs such as copyright its 60, patent its 20, trademark its ten, please do answer.
Dear Mohit,
You talked about the term of Copyright as 60;It is life of the person plus 60 years; Then regarding Patent it is 20 years and it is OK; As regards Trademarks it is not 10 years;It is renewable every Ten years and as long as you use it and keep renewing its term for usage in business, the term would be eternal!
It is all a policy decision by the Government of India through the Parliament making its country’s law enacting powers what is needed for the country. As regards Term of the Patent, TRIPS agreement has decided what the term should be!