Analysis of controller’s decisions – April 2016

I am bringing a number crunching post after a long time – and is based on the 400+ decisions issued by Controller’s office in all four patent offices.  April 2016 was a busy month!

The rate of grant, and allowance have increased significantly since my last post summarizing the 2013 decisions.  At that time the average number of decisions each month was ~150.  In contrast, the current rate is well over 400 decisions per month.  This is an increase of almost 267%.  I am not sure whether the increase can be attributed to the Make in India program or a general increase in efficiency.  It seems that both factors are at play here.

Not only is there an increase in the number of decisions, there is also an increase in the grants.  The grants are 268 /400, i.e. 67% applications went along to be granted.  In 2013, the rate was 62% but the number of applications were much less.  What I am concerned about is that out of these 268, 112 were granted by either a one line or a one para decision. These were on the lines of “..I am satisfied with the amendments made…application proceeds to grant..”  This is about 41.78% –

No file uploaded came up only in two cases, and in four instances – a copy of the response as filed was uploaded – I couldn’t figure out whether it was granted or refused.  130 were refused – and in 83 such cases this was because the applicant did not appear before the Controller.  This factor adds on the importance of the overall grant.  It could very well be the case that if argued properly, the Controller would have granted the application.

In general, the average length of pages in a grant decision is three!

There were about 25 decisions as relates to Section 3k.  It is extremely interesting to see these – as the revised guidelines came out in February.  Out of these 25, 16 were granted, and 9 were refused.  In six (out of the 9), the refusal was because the applicant did not enter appearance before the Controller – leaving 3 refused on merits.  In 2 out of 16 cases, the grant was only a paragraph long.

The revised guidelines were not made applicable / properly to these decisions and claims allowed.  One common thread across these grants is that the agent argued the hardware features of the claims and that the software added to the technical nature of the invention.

Overall comments: Our patent office should ensure a consistent quality policy across the patent offices.  It shouldn’t be the case that different patent offices (or controllers) grant or reject applications on different issues.  Consistency should be maintained – and reasoned grants be given.  These are not trivial rights being allocated to the patentee – but exclusionary rights – and hence there is a very strong case of public interest in the manner of grant / rejection.

This post would also be helpful to those taking the patent agent exam.  In some of the rows below, I have indicated the relevant Section being made applicable.  Exam takers should see the decisions and the specific section being made applicable.  This would help in learning the application of the law.  Attention should be given to the finally granted claims.  Application should try to draft claims and compare with the finally granted claims.  Good luck folks!