The Indian Patent Office : Paralysed by Procedural Bottlenecks? (Part I)

(At the outset, I’d like to mention that a large portion of the content in this two part post has been based on information received from an unnamed source. The posts are representative of the state of affairs during Chaitanya Prasad’s tenure as CGPDTM – we hear that the place has been materially spruced up and affairs brought in order since OP Gupta assumed office in November 2015. I’ve attempted to present a balanced view on the subject and would love for readers to come forward and contribute with any more word they have on this)
PS : Part II of the post is accessible here. 

(*long post ahead)

Below is a table outlining the number of patent decisions issued by Controllers over a period of six months (April-September 2014)

This disconcerting data is worrying on several counts! Out of a total of 80 controllers, while 25 did not issue even a single decision, of those that have – 7 have failed to hit even a minimum of ten on their individual lists! One could well excuse Chaitanya Prasad, given that as the CG of Patents, he has to focus on the overall administration and may not therefore be able to directly issue decisions.

Our source further alleges that a number of the decisions issued seem to lack in reasonableness and logical consistency, and referred to a few particularly defective decisions – 385/del/2005, 671/cal/1998, 753/del/2005, 4544/delnp/2008, 981/del/2005, 803/mumnp/2008, 3379/delnp/2006. Our prima facie consideration of the decisions, however, divulged that contrary to our source’s allegations, none of them appear to be flagrantly mala fide – in response to the IPO’s objections, several of the applications have been amended, whilst others have provided seemingly satisfactory responses. Interestingly, one of the ‘flawed’ decisions we looked at was 1577/delnp/2006 – which was in fact issued in for a divisional application. For the uninitiated – divisional applications are filed when the parent application relates to more than one invention, effectively requiring the applicant to split the parent application and file one or more divisional application, each describing only one invention. The source’s challenge as to the patent’s validity under Section 3(d) of the Patents Act thus doesn’t hold water, as the filing date of both the parent and the divisional application is the same.

In August 2014, Swaraj drew attention to a ghost comment that we’d received on one of our other posts pointing to the growing trend in the IPO to churn out as many decisions as possible at the cost of compromising its reasonableness –effectively resulting in poorly considered decisions. The comment goes on to mention that the failure to adhere to set performance standards (again, based purely on quantity), would result in these examiners and controllers being forcefully transferred or issued show-cause notices.

Faulty Evaluation System

Two years ago, the IPO introduced the Point-based Evaluation System that appears to have wreaked havoc with the examiners’ routine system of working. The Controller General of Patents Designs and Trademarks’ (CGPDTM) order appears to have directed  both controllers and examiners to reach a minimum of 100 points per month –  individual examiners can only achieve this by  sending a whopping 30-35 cases to the controller for final disposal, over a total of about 18-20 working days.

On the other hand, controllers have it a little easier because each controller has 3-4 examiners working under him, who can easily send him a minimum of 10 files per month, enabling him to comfortably reach his 100 point-target. It seems that as per CGPDTM order, when an examiner handles an amended application and sends such application to the controller for grant/refusal, the examiner gains 3.5 points if the case is finally disposed of.  Thus, examiners are often left disinclined to pass on the application to the controller together with their objections for the fear of the application remaining pending for a long time, leading to a perilous delay in the receipt of the points.

The controllers themselves can rake in 6 points if they offer a hearing, followed by a grant of the application – an opportunity that they thoroughly exploit, inevitably contributing to an escalating number of unnecessary hearings. We hear that in the desperate scramble to top the score charts, patents are being granted even when objections are raised under several provisions of the Patent Act.

TRANSFER POLICY

What has exacerbated this issue is the performance based transfers introduced by the CGPDTM, Chaitanya Prasad in 2014. This mechanism effectively linked  transfers to the number of points an officer gets every month – in direct contravention not only to the government’s general policy of transferring officers only on personal grounds or on grounds of public interest, but also to the ex-CGPDTM’s promise to transfer officers on the basis of their preference, upon completion of two years of probation. We hear that a number of the examiners recruited in 2014 have been posted to regions far away from their hometown –perhaps in order to give effect to the CGPDTM’s double-edged rule, that allows the top ten officers with the most extraordinary performance to transfer to an office closer to their hometown, while the top 10 of those falling short of the requirement must face arbitrary transfers issued in ‘public interest’ or extended probation periods. This has greeted senior officers who have gone decades working in the same office, with a rather unpleasant surprise. Those who can, work overtime to make sure they hit upwards of 40 decisions per month in order to get transferred to their hometown – those that don’t, face the risk of being bombarded with show-cause notices and transfer threats (because what the patent office giveth, it deftly taketh away).

Our source goes on to claim that the recommendation made by the Parliamentary Committee headed by Dr. Murli Manohar Joshi in 2008 suggested that patent examiners target 100 applications per month to attain comparable results to the standards set by European Patent Office (90), United States Patent Trade Office (97) and China(88) – but the ex-CGPDTM (PH Kurian) as well as the current, both turned a blind eye to this, and chose to set their own rules by bringing the performance-based-transfer system into play.

Further, the CGPDTM appears to have (conveniently?) failed to ensure the standardized implementation of its existing HR or Transfer policies. . For instance, while the government policy is that transfer must mandatorily follow an officer’s promotion, this policy isn’t uniformly enforced across all classes of officers. On the one hand you have officers working at a particular office for years together being forced to move to another place because of low points. On the other , some officers are transferred to another office for a few months but then return to their former office soon after  Then you also have (currently retired) senior officers like K.S. Kardam and D.K. Rahut who worked at the IPO until 2014, went several years without being transferred despite the former having received two promotions in two years.

The cumulative implications of these rather biased and counter-productive policies is the intentional neglect on the part of the examiners in scrutinizing the forms – applications are swiftly and cursorily examined with little idea or interest as to the particulars of the matter and the invention’s actual patentability, the examiners’ sole motivation being to avoid transfers. This appears to be the reason why many of these officers prefer working on process patent instead of product patent applications, because the latter requires far more analysis and attention to detail, which they clearly (and quite understandably) are not keen on bothering themselves with.

The adoption of a mechanism that penalises officers who do not issue the set number of decisions per month seriously undermines their intelligence, as well as their capabilities at effectively doing their job. The examiners and controllers recruited in the patent office are well-qualified Class 1 officers who ought to be examining applications and granting patents based on their merit, not treating the entire affair as though it were a mechanical operation, and perfunctorily yield decision after decision.  Add to this the IPO’s appalling failure to catch sight of the piling heap of unassessed applications it has amassed over the years (over one lakh, we hear) – a malady that can be remedied only by getting more personnel on board to fix its terribly skewed examiner to patent application ratio. But that is undoubtedly a Herculean task to accomplish – the rather large hole it has dug itself into is going to make it considerably hard for it to attract new recruits.

While the IPO certainly deserves a lot of flak for its failure to effectively handle this issue, I do, however, feel the gnawing need to consider empathizing with the overburdened patent office – thousands of applications are filed from month to month, and disposing all of them within set deadlines might turn out to be a difficult task without the setting of a mandatory standard for examiners and controllers to adhere to. However, since the news of the many other self-imposed infirmities that the IPO has been afflicted with came pouring in (which I shall discuss in the next post), I’ve been left with little sympathy for the capricious ways of an office whose functioning varies with its own whimsical fancies..

It’s about time that the IPO owns up to the catastrophic inefficiencies, and remedies the fall-outs of a decision that the CGPDTM doesn’t seem to have entirely thought through.

P.S. : A big thanks to Prof. Basheer, Gopika and Balaji for their inputs on this two-part post !