The curious case of medical method patent: Can doctors patent surgical procedures?

Around a month ago, the Times of India reported that a Satara-based Gynaecologist Dr.R. S.Katkar had received a patent for microsurgical recanalisation operation. This story made us do a double take! Did the patent office err and grant a medical method patent or was it a case of misreporting by the Times of India? Well, we did a little bit of research on this and turns out that the patent application had just been published in the patent office journal as 698/MUM/2013. We contacted the inventor Dr.Katkar, and were astonished to find that he was blissfully unaware of the fact that a published patent application is not the same as a granted one and that it takes at least a year or two (often times more) to get a patent. Even more surprising was the fact that he had no clue that methods of treatment were not patentable under Indian patent law [Section 3(i)] .Apparently, his patent agent through whom he filed the application never informed him of any such prohibition. 

In the TOI article, Dr. Katkar has been quoted as saying “The success rate of microsurgical recanalisation of fallopian tubes is 80% in developed countries. I studied the reasons for 20% failure rate and developed one unique technique to minimize this. The patent has been awarded for this modified procedure.” 
Patent eligibility of medical method patents 
Section 3(i) of the Indian patents act precludes medical method patents from the scope of patent eligible subject matter because they compromise patients’ rights by limiting access to inexpensive treatments and also restrict practitioner’s freedom. Section 3(i) states “Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products is not an invention.” Any operation on the body which requires the skill and expertise of a surgeon, any therapy or diagnosis practiced on a living human or animal body are excluded from the scope of patentability under Section 3(i).
Unscrupulous patent agents 
The patent application and prosecution procedure in India is lengthy, not to mention complicated. For a patent application to advance to issuance stage several criteria should be met. Firstly the subject matter should be patent eligible (section 3). Additionally a comprehensive prior art search must be conducted to determine state of art and the invention should be novel and possess inventive step over the existing art. Then there is this enablement requirement, claim construction so on and so forth. One has to have a clear understanding of the nuances of the invention and intricacies of the laws. Obviously this is an overwhelming amount of information for an inventor to grasp, understand and comply within a short period of time. So hiring a patent agent/attorney becomes essential. This is an expensive exercise and sometimes inventors are taken for a ride by unscrupulous agents. 
In this case, Dr.Katkar informed us that a patent agent a certain Mr.Bhavesh had charged Rs.70, 000 for drafting the patent application alone!! A search at the electronic register of Indian patent agents reveals that there is no agent registered by this name. Section 129 of Indian patents act clearly states “No person either alone or in partnership with any other person, shall practise, describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered.” This particular person (Mr.Bhavesh) posing as a patent agent, not only did he charge an exorbitant amount but he also failed to provide sound advice regarding patentability of the invention. Incredible! 
Empowerment of Independent inventors 
The national innovation foundation (NIF) and affiliated organizations have wonderful cost effective initiatives to help and advice grassroot innovators throughout the process of filing and commercializing the invention Anubha had blogged about this here.
The patent facilitating center(PFC) a wing of TIFAC,department of science and technology, Govt of India provides techno-legal as well as financial support for securing patents and post issuance support. However this support is restricted to innovations funded by Indian universities/governmental agency. 
On the international platform USPTO has a specialized cell dedicated to independent inventors. This cell has various tools and provides inventors access to a wide array of resources. Inventors are strongly encouraged to file patent applications on their own behalf (pro se). Else the USPTO along with several IP law associations has designed pro-bono programs to assist financially under resourced independent inventors so that no worthy invention is left undiscovered. 
In India more such initiatives are needed to assist independent inventors in patent filings, to increase awareness among inventors and improve the overall innovation ecosystem. 

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16 thoughts on “The curious case of medical method patent: Can doctors patent surgical procedures?”

  1. Form-1 is signed by the inventor himself, not the patent agent. Was the agent only hired to write the spec??

  2. A 9 page written description and claims and rs. 70000.00 (works out to Rs. 7777.00 approximately per page!!!).

    The nine pages also appear to be a fairly faithful reproduction of what inventors generally provide as their idea of what their invention is.

    There is no shortage in this country of so called patent experts and patent agents who write specifications that should rightly be consigned to a shredder and recycled.

    Our sympathies should be with Dr. Katkar.


  3. Whoever Mr. Bhavesh is there must be exposed and prosecuted for cheating.
    I doubt if he is a patent agent at all (as Madhulika also doesn’t seem to find his name listed on the patent register).

    I feel sorry for the inventor.

  4. Madhulika, you mentioned that PFCs fund only organizations/govt agencies. Although this is true regarding the funding part, Patent Information Centres also accepts applications from individuals and submits a preliminary search report, just as it does for organization-routed applications. Further, if the inventor, upon examining the search report feels that it is still patentable, PICs facilitate individual filing by directing to registered patent agents. This way, a lot of fraud and futile filing is avoided.

    Actually PIC Kerala is fervently conducting awareness programmes at all levels (grassroot to academia to research institutions) regarding these aspects. This post is to sensitize more people on the same.

  5. The last things an individual inventor who intends to use the patent system need is a procrastinated, prejudiced and red taped support, and this is what the “Empowernment programs” exactly provide. Most of the remunerative programs run by Ministry of Small and Medium Enterprises, and DoT provide meager compensation that too post patent grants, which takes minimum 4-5 years.

    Most of the governmental support programs empanel private attorneys and firms, whose primary objective of associating with such programs is to get branded by the association. They agree to provide an undervalue rate for their services, and in return provide under quality work, which is commensurate to the price. The person that suffers is again the inventor.

    With the life cycle of technologies ever reducing, what inventors need is a proactive hand holding from stake holders of patent system to make things work for them. An idea that is game changing, might not remain one if timely support is not provided to inventors. The patent system is first to file that means that if you delay filing for a patent, there are chances that some else might do before you to your prejudice. Merely having a patent, without a proper business strategy and most importantly investments is absolutely worthless.

    Private patent firms and agent services have emerged as a definite and successful option for inventors. These are services that are result oriented and give a viable option to inventors who are serious about what they have invented. Of course, since the services are quick and effective, the services cannot be free and come at a price. Those who can afford can avail, those who can’t can opt out. The inventors need to be equally educated as to who they should engage, what the agent is doing, and fair value they need to pay for the services they are availing.

    In any case, I am not defending the service provider in this case. The instant case is a perfect example of how inventors are being taken for a ride. 9 pages of description and 70,000/- for the patent application is exorbitant. More importantly, the patent application has too trivial claims, most likely to be rejected by the patent office.

    “We claim” – Who is the we here? There is one inventor of the invention, right?

    Claim 1. A process to prevent clot formulation comprises of suture material either absorbable or non absorbable thereof.

    Not only Claim 1 is likely to be anticipated by numerous prior art as it is common knowledge, claim 1 is most likely to be rejected based being ambiguous and lacking clarity. The drafter did not even know the difference between “process claims” and “method claims”. Neither did he have any knowledge of what is the novel and inventive concept in the invention.

    I certainly do not agree with the loose comment of the writer on the pricing of the services. The writer on one hand acknowledges that “The patent application and prosecution procedure in India is lengthy, not to mention complicated” and on the other hand finds the pricing to be exorbitant. Further, there are reference being made to importance of eligibility of claimed matter, enablement and claim construction, and then there is a direct comment on the excessive pricing. No reference is being made to quality of the services being provided in this particular case. There is a clear dichotomy, and shows a clear lack of understanding of how patents are written, prosecuted and monetized. I think the author was too eager to post the item on the blog to improve the quality of SPICY IP blog.

    Experienced patent agent and Regular Spicy IP reader

  6. Thank you all for your comments.

    Excuse me Anon@ 12:09
    Obviously you never read your comments before posting .I guessed as much …

    According to you empowerment programs are ineffectual.You also agree that the instant case is a perfect example of exorbitant pricing. Then you go on to say that “I certainly do not agree with the loose comment of the writer on the pricing of the services.”

    I have detailed the complexities involved in patent filings to emphasize how difficult it is for inventors to file patent appns on their own (pro se kind of thing).

    And what is this even supposed to mean? “The author was too eager to post the item on the blog to improve the quality of SPICY IP blog.”

  7. Looks like Madhulika tweaked a raw nerve here huh, Anonymous @12.09? 🙂
    Buoy oh buoy!Isn’t someone also promoting private patent firms in their comment here?!!…zzzzzz:) “Private patent firms and agent services have emerged as a definite and successful option for inventors. These are services that are result oriented and give a viable option to inventors who are serious about what they have invented. Of course, since the services are quick and effective, the services cannot be free and come at a price.”

    Very well covered Madhulika. Keep it up!

  8. For Anon at 12.09 – It is not necessary that private firms have necessarily provided or provide the services they claim to do. The entire patent profession is now replete with cases of firms (even established ones) running into overdrive to hire former examiners and controllers, or even worse, relatives of such serving government officers. I wonder when this practice will stop – just as one high court judge cannot practice in the same court, or a relative of a judge cannot appear before him/her, a similar standard should apply for the patent profession. Today, the number of firms that as a matter of principle do not recruit examiners/controller’s/their relatives can be counted on the fingers of one hand. If private firms rely on this method of providing service, then God help the profession.

    All this means is that it appears that private firms rely less on quality of drafting and more on inter-personal relationships to get cases accepted.

  9. Bhavesh wanted to make money. I am also a patent practitioner but not a registered patent agent yet. I also do not call myself so. But I do advise a lot of people on patenting, inventions, give talks in universities etc. And there are many who may be doing so. Otherwise you don’t expect someone to learn patent drafting,patent act etc. overnight and go sit for exam? Some take 5 years before they clear it, some with better memories are able to clear it in first attempt.

    My whole point is that Bhavesh did rob Dr Katkar, but then had he been serious about his profession, the job he do and passionate about the profession he is in, he would have never drafted such a patent. And if drafted, he would have even drafted it in way to look more patentable.

    And there is no dearth of registered patent agents drafting patents on totally frivolous inventions. The patent office database is full of such work. But that is not what client wants to listen. I once gave a negative patentability assessment report on account of it being a mere mixture, obvious and not even novel, and the client went to a bigger and much reputed firm and they filed patent for him. I was taken to task by my seniors. What would you call this practise of registered patent agents? Do not just single out the unregistered patent practitioners. Even the registered agent indulge in same practice and they too do not have choice, since some or the other agent will file patent for them. And when you lose a client, you lose at least revenues from 4-5 assignments, lots of references and therefore, business loss. And this is perhaps done all over the world. Check the IPKAT’s latest post on “everyone else is doing so” syndrome (though the post is in different context but it also suits the patent context).

  10. “Those who can afford can avail, those who can’t can opt out.”

    …is a very rude response. Someone who really wants from the core, to encourage innovation, should never say that. I stop even considering the whole comment, after reading just this statement. I personally do not consider this person fit for the profession, no matter how experienced he/she calls him/herself.

  11. Its unfortunate, we are diverted from the issue due to this infighting.

    What will happen to poor Dr. Katkar? What options does he have to bring Mr. Bhavesh to task?


  12. Hi Madhulika Vishwanathan,

    That is a very good incite.

    I have list of firms owned by non-patent agents, few FER raising question on Status of on being an Patent Agnet. But still there is no action.

    What is more interested is FER is been replaced.

    Please Check the FER 1764/MUM/2007, which is replaced, I will share original FER by Mr. Ksarawani.

    IPO is totally corrupt, post your ID to get Original FER.

  13. @ Rahul,

    I can understand learning can take 4-5 years than you can clear the exam, but could you preach other when you have not qualified the the basic test to be Practitioner or my be by never gauging skill with respect to this basic Patent Agent Exam.

    Sorry to say, I don’t agree, and you considartion to the So call Patent Agent in this case.

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