May 2012: Controller’s decision at the patent office

The month of May was sizzling like the weather in Delhi, at the Controller’s offices.  In total, approximately 140 decisions were issued!!  Compare this with March, in which a total of eight decisions were issued.  Because of the large list, individual decisions are not discussed in detail in this post.  Separate posts would follow for analysis of individual cases, and our readers are welcome to ask for analysis of ones in which they are interested in the comments section.  There are ~35 cases where no file has been uploaded and I expect them to be uploaded as and when the respective Controller’s make them available for uploading.  All files that I was able to download are made available here.

Apart from the large number of decisions, there is an unwelcome trend in the decisions from a few Assistant Controllers, where a mere single operative paragraphs decides the fate of the applicant with minimal comments on the real grounds.  In one glaring instance, a total of three sentences (~15 words in total) have been used to grant an application.  In other cases, the contents of the FER and /or claims are reproduced verbatim.  I have highlighted these “pithy” decisions in the table below with an asterisk in the section/issue column. Where decisions are short because certain formal objections have been met, the same have been indicated. 

There are multiple reasons why the unwelcome trend should stop.  First and foremost is the doctrine of prosecution history estoppel.  Under the doctrine, the applicant’s statements and the reasons for allowance become part of the patent and it provides immense help in future litigation, if any, that might arise from the grant of the patent. See related article.  Second, not only does this trend run afoul of our patent office’s quality policy, it is a dis-incentive to all the hard work and effort put in by the remaining large majority of Assistant Controllers.  Third, there is no reason that stops anyone from assuming that extraneous factors helped in the grant of a patent even when the Controller had issued the decision in utmost good faith and considered the case on merits.   Finally, those 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.  Formal objections are allowed except when made after the stipulated time.