Oops! IPO did it again: IPAB pulls up patent office for lack of procedural fairness


This order has been staring at me for quite some time now and I finally managed to take time out from work to analyze this interesting case!

Brief Facts:
Vide an order (which can be accessed here), the IPAB upheld the appeal filed by Thomson Reuters Global Resources against the Assistant Controller’s decision rejecting Thomson Reuters’ patent application. The invention of the appellant (Thomson Reuters) is entitled “Systems, Methods, Interfaces and Software for Extending Search Results beyond initial query-defined boundaries.” A search at the Indian patent office (IPO) reveals that this patent application is published as 1926/KOLNP/2006.
Chronology:
The appellant (Thomson Reuters) made the following arguments. The First examination report, dated Sept 15th 2008 listed several objections. The objections stated that the subject matter of the claims lack inventive step and are obvious in view of the International search authority. Other objections cited in-eligibility of subject matter under Section 3(k) of Indian patents act.
Subsequently on 28th August 2009, the appellant filed the Form-13 and submitted revised claims and requested the examiner to reconsider the application. Upon receiving the revised claims, the examiner responded that “the official requirement raised in a FER has not been met.
The appellant’s counsel in a letter dated December 1, 2009 objected to the examiner’s vague response and said that there should be more clarity regarding the objection and merely stating “official requirement raised in a FER have not been met” will not help the appellant to rectify the defects, if any.
Subsequent to this, the examiner in a communication dated December 3rd 2009, responded that “official requirement raised in a FER have been met and that the appellant should come for the hearing.” 
The appellant in another letter questioned the necessity for a hearing considering all the requirements in the FER were met. In what could be termed as “a comedy of errors”, the examiner then replied in another communication that the previous letter (Dec 3rd 2009) was incorrectly worded due to clerical error and should have read “official requirement raised in a FER have not been met” The Deputy controller also reiterated the same position as that of the examiner!
On Dec 29th, 2009 in another communication the appellant’s counsel wrote that the revised claims had not been considered by the patent office and also the written submission of the appellant was also not negated.A hearing was scheduled on Jan 25, 2010. In the hearing, the appellant’s counsel submitted that the FER objections were based on a single document D1 cited in ISR and even after the claims were revised, there was no communication negating the written submissions.
After the hearing, an order was passed in which the patent office rejected the claims and this time only the relevant portions of the FER were reproduced. However, the appellant noted that “objection A refers to not only D1 which was in the ISA, which is US 2003-097357 but also D2, which is WO 00/77690
The appellant’s counsel then rightly submitted that unless the objection was exactly identified there was no way to rectify the deficiencies in the patent application. The counsel also pointed out that repeated requests for clarification were disregarded. There was an obvious error in the order since it read as “the subject matter of the above original method claims 4 – 8 or revised method claims 1 – 14 and original system claims 1 – 3 or revised apparatus claims 16 – 30 either alone or in combination with the defendant claim do not constitute an invention.
Also prior art D2 was cited by the examiner in the final order without any prior notification to the appellant. Citing the IPAB order (159/2011 – Touchsensor Technologies, LLC vs. The Controller of Patents and Designs, Kolkata and others), the appellant argued that it is absolutely necessary to know on what ground the application for patent was rejected, cite relevant paragraphs of prior art and if objections are not communicated, then it means that fair opportunity was not given to the appellant.
In the order (159/2011), the IPAB observed that the examiners had a duty to cite the relevant paragraphs of prior art which adversely affected the patentability of the claims. The order also stated that additional objections other than those raised in a FER shall be communicated along with the notice of hearing giving a reasonable time to the applicant.
Shri. Soumen Das, Assistant Controller represented the respondent and argued that no patent can be granted for the invention, since it relates to a software.
IPAB decision:
The IPAB noted that vague statements like “official requirement raised in a FER have not been met” do not indicate what the objections are and thus not fair. Inspite of several requests by the appellant to clearly state what are the objections, the respondent only repeated the same sentence. In this case, the original claims have been revised. If even after that the same objection is raised it begs the question whether the examiner applied his mind at all. The IPAB then held that the matter should be sent back to the Controller for the examination in accordance with law. “We are making it clear that we have not examined the merits of the patent at all. We have only seen the procedural flaws. Therefore the Controller at is liberty to arrive at his decision according to law.” However they also opined that the grounds of appeal should be carefully worded and attributing ulterior motives and wrongful intent to the patent office officials does not appear to be civil drafting of grounds.

My opinion:
The patent prosecution procedure at the Indian patent office leaves much to be desired in terms of articulation skills, logical and analytical rigor. What’s more disappointing is that this is not just an isolated case. Seriously, how many of us have received vague objections like “official requirement raised in a FER have not been met?” Even after the claims are revised or for that matter deleted the same objections are raised!
Prashant and Shamnad have time and again in this blog (see here and here) highlighted the need for training programs with either a University or a Judicial Academy to ensure that orders are well reasoned and better articulated. Also Rajiv has made similar points here.
There is a dearth of training programs for quasi-judicial authorities like patent officials and somehow this needs to be worked out! Hopefully after this, we can expect better standards of reasoning in future prosecutions at the patent office.

Madhulika Vishwanathan

Madhulika Vishwanathan

Madhulika is a registered Indian patent agent and has completed her Master’s in Pharmacology from the Institute of Chemical Technology (ICT), Mumbai. Her interests include issues involving pharmaceutical and biotechnology patent law, regulatory aspects like Hatch Waxman litigation and antitrust law.She is currently working at law firm based out of Memphis, TN.

3 comments.

  1. AvatarAnonymous

    Just supplementing “… training programs with either a University or a Judicial Academy to ensure that orders are well reasoned and better articulated.”.

    India Industry should be added to that list, since they are likely to have more relevant practical experience. There are several India located businesses such as Evalueserve, Pangea3, IPHORIZONS, GE, Philips, each with substantial ‘search operations’ serving the global tech players. Each of these search operations replicates the functions of the patent offices in a sense. The deficiencies noted in the judgement are filled by proper ‘search’ function.

    Anont

    Reply

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