Patent Trademark

Ghost Post: Controllers stuck between a grant and a hard time?


GhostwriterA few of our recent posts have focused on the executive power of the Patent and Trademark Office (IPTO). Spadika’s post on the order triggering this debate — (Intellectual Property Attorneys Association (IPAA) unsuccessfully challenged an order by the Trademark Registry pertaining to Pre-Registration Amendments of Trademark Application) —  can be found here. Shamnad then followed it up with his post that commended the trend of judicialising the executive, while also critiquing the reasoning in that order. We then had a guest post by the arguing counsel of the IPAA, Chander M Lall, presenting his critique of the Controller General’s order.

While this case is currently awaiting a decision from the High Court, an anonymous comment on Shamnad’s post throws in a very interesting and relevant angle to this debate — interesting enough for us to decide that it merits its own post. The anonymous commenter (AC) argues that the quasi judicial powers of the IPTO are being utilized less wisely due to ‘performance’ indicators that put the Controllers in a difficult spot! With ‘performance benchmarks’, translating to ‘quick disposal’ of applications, controllers are being disincentivized from spending time on their reports, AC argues, which in turn is leading to easy grants.

Interestingly enough, just as I was putting together this post, we received another comment on a separate post (see 2nd comment on Manoj Pillai’s guest post for us here) which is also complaining about the IPO granting patents too easily – with Chinmaya (the commenter there) also mentioning some numbers of patents granted that seem quite concerning! (Disclaimer – I have not checked these numbers myself, and hence am not making any claims to their veracity). Anyhow, without further ado, the ghost post of the day:

[Comment on “Judicialising the Executive”.]

“It is true that the Patent Office started operating in a professional quasi-judicial manner since the reforms initiated by Mr. Kurien took roots. This is quite evident in the reasoned decisions issued by many Controllers, which are quite well-written. But, this trend is now slowly getting hazy ever since the new performance measures are introduced to evaluate Officers performance. This is turning the Patent Office into some kind of a ‘factory’ to ‘produce’ patents. The Examiners and Controllers are being threatened to issue more reports/ decisions and patents, or else face transfers or show-cause notices.

The situation has become so bad that shabby reports are being issued and bad patents granted. Generally only those cases go for refusals, where the Applicants show little or no interest i.e. ‘safe refusals’. Examiners who are simply copying International Search or Examination reports are praised, and Controllers who are ‘printing’ letter of patents are ‘rewarded’. In reality, Examiners who are working hard on their reports are being given transfers and show-cause notices. There are Controllers who are simply granting patents, even when Examiners objections are pending, by waiving such objections without offering any hearings, or at most giving decisions by merely writing one liners, e.g. ‘in view of Agents submissions, objections are met’ etc. (Several of such reports and decisions can be found on the patent office’s websites).

These Controllers are giving anything but reasoned decisions. Infact, recently several first examination reports were issued by some Controllers were extremely shabby, so much so that the CGPDT had to intervene. Still, the same negligent ‘printing’ trend is continuing, as the Officers also know that the CGPDT can not reverse the trend he himself has set. This blatant violation of procedures done in the name of ‘performance’ has immense potential to harm nation’s interests in the medium to long term. It will definitely harm India’s status of International Searching Authority. It is also in violation of Higher Court’s and IPAB’s orders, where it has been explicitly expressed that quotas and targets should be reasonably fixed and should in no way result in unreasoned or bad decisions. It seems hilarious that while in the international fora the Government is fighting tooth and nail to put brakes on wide patenting claims of the developed world, on the other hand the Patent office itself is indulging in glaring infraction of Sections 3(d), 3(k) and 3(p) of the Patents Act. A joke in the Patent Office equates the ‘Kurien era’ with UPA-I, and the present era as UPA-II. But the serious question raised in view of such shabby decisions and indiscriminate grants is: What is the Motive?”

Swaraj Paul Barooah

Swaraj Paul Barooah

Follow @swarajpb

Swaraj has a deep interest in IP, Innovation and Information policy, especially when they involve issues relating to Access to Knowledge, Innovation incentive mechanisms, Digital Freedoms, Open Access, Education, Health and Development.

After his BA, LLB (hons) from Nalsar Univ of Law, Hyderabad, he went on to do his LLM from UC Berkeley in 2010. He is now pursuing his J.S.D. degree from UC Berkeley where he is focusing on Drug Innovation Policy and Access to Medicines.

Aside from SpicyIP, he is also engaged as a consultant on various IP matters, and is a visiting faculty member at Nalsar Univ of Law. He is also in the process of starting up a New Delhi based “IP, Innovation & Information Policy” focused think-tank.

3 comments.

  1. Swaraj Paul BarooahSwaraj Paul Barooah Post author

    We’ve received another anonymous comment via email:

    “Let me highlight another aspect of this ‘rush’ to grant patents. NO
    examiner/ controller is serious to conduct pre-grant and post-grant
    proceedings.

    This is simply because it takes a lot more time to grant/ revoke a
    patent after these hearings while granting/ refusing a non-contested
    or safe application is much easier.

    In one of our cases for e.g. the Kol IPO has not even issued the
    examiner board for assessing the patent’s merit even after close to 18
    months! I know friends’ whose pre-grant filings / response to another
    company’s opposition has been lying at IPO for 2 years with no action.

    So, who loses? At the first instance, its the Applicant – since his
    term is being eroded – but then the opponent also loses since he is
    losing time value + with decisions like Aloys W. from Sup Ct., we do
    not know the interplay between injunctions / infringement suits will
    play in the near future.”

    Reply
  2. Anonymous

    The quality of the FERs and ISAs will only improve when there is enough time given to the examiners. As the present scenario is that the number of patent applications are increasing exponentially but on the other hand there are not sufficient examiners. I think there should be a recruitment of more number of examiners and then only will they be able to improve the quality of reports.

    Reply

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