Towards More Intelligible “Open Access” at the Indian Patent Office: A Study of Compulsory Licensing Cases – I

This post has been co-authored with Prof. Shamnad Basheer. 

In Part I of the post, we illustrate that a number of patent records are not accessible on the Indian Patent Office’s website in an easy to access and intelligible manner, using the example of the three compulsory licensing (CL) orders passed by the Indian Patent Office. In Part II, we synthesise some of our thoughts and suggestions on making Indian patent data more openly accessible and democratic going forward.

As our readers may know, we are passionate advocates of open access. And have been championing this cause within the Indian IP ecosystem for many years ago (in fact, this constitutes one of our foundational aims at SpicyIP). Some of our earlier posts on this theme can be viewed here, here, here, here, here, here, here and here. In particular, we take some modest pride in the fact that it was our public petitions to the Indian Patent Office (IPO) and the Prime Minister many years ago that effectively triggered the first spate of online patent record access through the IPO website.

However, open access is not just about dumping something online, but ensuring that the document is made available in an easy to access and intelligible format. In other words, without ease of access and intelligibility, access is not really “open”. This was a key theme in our SpicyIP conference last year at NLS (organised along with Law and Tech Society at NLS). An excellent illustration of such an open access offering is that of the Open Data Portal of the US Patent & Trademark Office, created with a view to improving the “discoverability, accessibility, and usability of public patent and trademark data”. This portal is a stellar example of how government agencies can unleash a wealth of data available with them to the public, allowing it to be harnessed as a tool for bringing about new possibilities and impacts.

Unfortunately, while our IPO has made great strides in its endeavor to be more transparent and has made a number of patent records public on its website, many of these records are not available in an easy to access and intelligible manner.

We illustrate this using a simple cohort of compulsory licensing (CL) orders. As readers know, we’ve had just about 3 CL cases in India post TRIPS. So, a fairly simple and small cohort to work with. Here goes (in the personal voice of Pankhuri who had a tortuous time accessing a key CL order pertaining to the Dasatinib case):

In an earlier post, I began by noting that the Patent Office’s order (dated October 29, 2013) in India’s second compulsory licensing case (BDR Pharma v. BMS) (“Dasatinib CL order”) is “not available on the Patent Office’s website”.

It turns out I was wrong. But, only partially so. While this order is available on the website, it is very difficult to locate and access. Secondly, the order itself is a scanned copy of the physical document, and as such cannot be internally
“searched” etc. Which is why we put up a searchable version of the CL order on our SpicyIP Resources page (thanks to EBC again for this).

Let me explain.

Subsequent to my earlier blog post, an anonymous commentator noted thus in the comments section to the blog post: “The decision of Compulsory license can be accessed here:”).

I clicked on this link and was surprised to find that the order was actually available on the Patent Office’s website. This led me to wonder as to where I went wrong in my search and if one, who does not have the link to the order, can actually locate the order on the website easily.

The link given in the comment takes us to a ‘News Detail’ page on the website which contains the link to the order with the news description as: ‘DECISION – Compulsory Licence Application No. 1 of 2013 titled M/s. BDR Pharmaceuticals International Pvt. Ltd. Vs. M/s. Bristol Myers Squibb Company’.

I copied and pasted this description on the Google search bar to see if one can locate this news page on Google, but surprisingly it did not show up in the search results.

‘Latest News’ Search Option

I, then, went to the ‘Latest News’ search page on the Patent Office’s website (by clicking on ‘View All’ in the ‘News & Updates’ section on the main page) and typed in the keywords “bdr”, “bristol” and “compulsory” in the search bar one by one.  However, no news item on the Dasatinib CL order was found each time.

‘Controller’s Decision’ Search Portal

After this, I clicked on the link to the ‘Controller’s Decision’ search portal available in the ‘Resources’ section on the main page of the website.

It is only after thoroughly checking for the Dasatinib CL order on this portal (which seemed to be the most obvious way to search for an order by the Patent Office) that I had earlier come to the conclusion that the order was not available on the Patent Office’s website and had thus stated so in my last post. However, since I could not locate the link to the order sent by the anonymous commenter using other search options, I decided to search for it on this portal again. On this portal, one can search for a Controller’s decision by entering any one of the following particulars of it: applicant’s name, opponent’s name, date of decision, the relevant section number, patent number or the application number.

I entered each of these particulars of the Dasatinib CL order one by one again and searched for the order, but then again I couldn’t find it. No record was found for four of the six particulars, namely, Applicant name, Opponent, Patent Number and Application Number.

Upon searching by Decision Date (October 29, 2013), 8 records were found but those did not include the Dasatinib CL order.

My last resort was to search by section number and I entered section ‘84’ (the Patent’s Act provision dealing with CLs) with the hope that the Controller’s orders in all the three CL applications that have been filed in India till now will appear. To my amazement, only 1 record was found and that too an order in a case involving Panasonic. For a moment, I thought there is a fourth CL case that I was not aware of, but on glancing through the order I realized that it dealt with Rule 84 of the Patent Rules and not Section 84 of the Patents Act.

Google Advanced Search

There ended my second search on the ‘Controller’s Decision’ portal. After not having found the order here again, I was puzzled as to how one could access the website page that contained the link to the order. I, then, tried searching the Patent Office’s website for the relevant page/order link using Google Advanced Search, but this attempt also did not yield any positive results.

General Keyword Search Option

With this I was sure that the order copy on the Patent Office website cannot be accessed by anyone unless they have the link which was sent by the anonymous commenter. Only then, I happened to notice a magnifying glass search icon on the main page of the website, alongside the tabs on different IP categories.

While wondering why I never saw it before, I clicked on this general keyword search option and typed in ‘BDR’ in the search bar. And there appeared the link to the page containing the link to the Dasatinib CL order.

In other words, the only way in which one might get access to the order is by doing this keyword search by clicking on the magnifying glass search icon on the main page. However, I’m not sure if this search option worked well in the past as well. Since a friend of mine who tried to locate this order initially had tried this option (several weeks ago) and failed.

I then went on to check if the other two CL orders can also be found using this search option. The Lee Pharma CL order showed up the moment I entered ‘Lee Pharma’ in the search bar. However, surprisingly, the Natco-Bayer CL order could not be found upon searching with any of these keywords: “bayer”, “natco” and “compulsory”.

‘Patent E-Register’ Search Option

I, then, conducted a search on the ‘Controller’s Decision’ search portal and also the Google Advanced Search for this order as well, the way I did for the Dasatinib CL order, but my efforts again went in vain.

That is when I recalled that I had once found all documents pertaining to the Nexavar patent in one place on the Patent Office’s website by entering the patent number on the ‘Patent E-register’ page (‘Public Search’ E-Gateway on main page à Patents à Patent E-register). Thus, I proceeded to this page and entered the Nexavar patent no. (215758) in the search bar. Once the E-register for this patent showed up, I clicked on ‘View Documents’ and found all documents involving the Nexavar patent including the Natco CL order. I checked for the Dasatinib CL order in the same way and found a copy of that as well in the Dasatinib patent (no. 203937) E-Register. However, I could not find the Lee Pharma CL order in the E-Register for the Saxagliptin patent (no. 206543).

Image from here

Please click here to view Part II of this post.

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