Design Patent

The Examination of the Examiner: Analysing the Delhi High Court’s Recent Observations


We’re pleased to bring to you a guest post by Aditya Mittal, analysing the recent observations made by the Delhi High Court with respect to the procedure followed by the Government in selection of patent examiners. Aditya works in the patents team of a boutique IP law firm, ALG India Law Offices. He pursued B.Tech from Thapar University, Patiala and then LL.B. (IPR hons) from Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur.

The Examination of the Examiner: Analysing the Delhi High Court’s Recent Observations

Aditya Mittal

A cropped version of a scanned copy of a US newspaper named ‘The Examiner’ (image from here)

In the recent case of Bharati Rathore v. Union of India and Ors., the Delhi High Court made some strong observations on the procedure followed by the Government in the selection of Examiner of Patents and Designs. The petitioner in this case had applied for the post of Examiner of Patents and Designs in the stream of Bio-Medical Engineering. Although the petitioner did clear both the preliminary as well as the mains exam required for the post, she could not make it to the merit list. The reason cited by the Selection Committee was that the dual degree of B.Tech. & M.Tech. in Cognitive & Neuroscience of the petitioner was not equivalent to B.Tech. in Bio-Medical Engineering which was the eligibility criteria in the first place. The court after considering the available expert reports, the affidavits submitted by the committee appointed and the assistance given by the amicus curiae, came to the conclusion that the petitioner’s degree was equivalent to B.Tech. in Bio-Medical Engineering and thus directed the Government to appoint the petitioner.

Procedure Regarding the Appointment of Examiners

There are also some other observations made suo moto by the court. The court observed that the selection of Examiners in India was not in line with practices adopted by the patent offices of some strong IP regimes such as European Patent Office (EPO) or the United States Patent & Trade Marks Office (USPTO). The court referred to the recommendations given by the Justice Allah Raham Committee, especially with regard to the necessity of having an interview in the whole selection process. The committee had mentioned that as the Examiners are required to come face to face with lawyers, professionals and various types of stakeholders, their communication and presentability skills should be tested through an interview.

Also, the court in para 99 observed: “The role of the Examiner of Patents and Designs is extremely important in the working of the Patents Act, 1970, especially after the Amendment in the act by which international applications are allowed to be filed in India. Thus, a competitive examination not having an interview as a part thereof would be clearly arbitrary and any such decision by the Respondents would fall foul of Article 14 of the Constitution of India”.

The court finally found it fit to pass on the matter to a PIL bench as the questions raised by them in the case were of the nature of a PIL and were of great public importance. The court sought reasons from the Government as to why interviews are not conducted as per the Justice Allah Raham Committee Report.

Personality Test: The Need of the Hour?

The court very rightly passed the matter to the PIL bench for further adjudication. Selecting the well reputed post of Examiner of Patents through a written exam alone is not appreciable. Especially, after the coming into force of the country’s international obligations under the patent law regime. Rule 18(2) of Patent Rules, 2003 was introduced vide notification dated April 23, 2013 as per which the Delhi branch of the Patent Office got the power to deal with International Bureau and any other International Searching Authority (ISA) and IPEA. Examiner is required to prepare the International Search Report (ISR). The Examiner has to search whether the description/drawings/claims of the International Application are following provisions of the Indian Patents Act. Accordingly, the information is sent to the applicant to comply with provisions in case required or pay additional fee in case of non-utility claims. The Examiner, thus becomes the first point of contact of the application in the prosecution process and has some important decisions to make. Therefore, the role of the Examiner is of paramount importance. Further, patents can play a vital part in the country’s development. It can be a tool for international trade, facilitator for global goods and services and a step ahead in the direction of globalisation. Any discrepancy can lead to huge economic as well as technological loss to the country. Further, the posts of examiner acts as a feeder to the controller’s post as 100% posts of controllers are filled through promotions (can be found under Modalities of Selection of page 25). Hence, at some later period, the examiner would have to deal with lawyers and other professionals. For this, the Examiner should be adept in communication as well as in his presentability skills. Adding an interview for the selection of a candidate would be a welcome step in this regard.

Various other jurisdictions, to determine the keenness of a candidate, conduct a personality test (page 10). It is also pertinent to note here that the posts of Examiners and Controllers are quasi-judicial in nature and it is not advisable to fill up such a post without conducting a personality test. The Controller is vested with the power of a civil court in accordance with section 77 of the Act. Therefore, it is quite prudent to expect that the Patent Office Officials would possess qualities akin to a judicial officer. In relation to this, the courts in various instances has laid down the qualities that a judicial officer should possess. For example, the Supreme Court in KH Siraj v. High Court of Kerela noted: “A Judicial Officer must, apart from academic knowledge, have the capacity to communicate his thoughts, he must be tactful, he must be diplomatic, he must have a sense of humour, he must have the ability to defuse situations, to control the examination of witnesses and also lengthy irrelevant arguments and the like. Existence of such capacities can be brought out only in an oral interview. It is imperative that only persons with a minimum of such capacities should be selected for the judiciary as otherwise the standards would get diluted and substandard stuff may be getting into the judiciary.”

One of the contentions from the other side can be that an interview is basically conducted to test the inter-personal traits of a candidate but as the job of the Examiner is a desk job, not requiring public interaction and only his technical expertise, there should be no requirement of an interview. But then, the procedure to select the Controllers should be changed because currently, the position of the Controller is filled only by promotions of the Examiners. A Controller has to interact with various stakeholders of the patent industry. It would seem too optimistic if we believe that the Examiner would develop his inter-personal traits, as required, before the said promotion. These are some inherent traits in a person which cannot be tested by any other way.

The role of the Examiner consists of varied tasks, for example to ascertain whether the invention has been sufficiently disclosed, checking the specifications and the subject matter, the claims and the scope of the invention, the best method to perform the invention to name a few. As delineated nicely by Vasundhra here, the quality of Examiners in the Patent Office is on the verge of a decline. This article substantiates the point further that the work of the Patent Office is not only administrative in nature. Having an interview in the selection process might help remove this ‘only administrative work’ taboo. This in turn might help motivate the authorities in declaring the Patent Office as a Scientific and Technical Organization, thus increasing the overall growth and incentivization of the Patent Office’s jobs.

Also, the actions of the Examiner have become more significant now after the dissolution of IPAB. Now, the appeal from the Patent Office would directly lie in the respective High Courts which will not have any technical member on the bench, contrary to the IPAB. The dependence on the Patent Office’s decision would be immense. Therefore, it is required to have competent people in the Patent Office, competent in terms of their technical skills and their inter-personal qualities. The Controller is required to give hearing opportunities to parties before dispensing with the prosecution proceedings. Thus, he is required to listen to the technical arguments advanced by the parties, apply his judicial as well his technical mind and then come up with a decision. For this, both his technical as well as inter-personal skills should be profound. The decision of the Patent Office would directly be challenged before the High Courts without having the scrutinization of the IPAB. The dissolution of IPAB thus would mean that the Patent Office becomes more far-reaching, efficient, manned and sagacious to maintain its sanctity.

It would be interesting to note what stand the Government takes when the matter is taken up by the Court.

9 comments.

  1. Jai hind singh

    Nice to see the article and recent development in patent office..Every says patent office role is vital in this country. Examiner and control’plays crucial role in deciding the Patentability etc..
    But no one bothers what is the working conditions of officer’s working in the patent office..Around 1000 officers working now..Out of which around 600 -650 examiner and 200 controller at diff levels such as AC,DC, JC and Sr JC.
    Pathetic fact is that most of the examiner will retire in the examiner post in 2040-2050 as there is no proper promotion policy in the patent office.
    So many experts committee have recommended for implementing MFCS for the scientific staff working in the patent office ( MFCS is a career progression scheme for scientists)…Patent office has declared 3-4 times as S&T organisation by Govt of India’. But so far the benefits such as time bound promotion scheme was not implemented in the patent office due to burocaratic as well as administrative hurdles.. Ultimate losers are the examiners who joined in 2012,2016 n 2019 as they won’t get any promotional avenues.
    While P H Kurian leaving the post of cgpdtm he recommended FCS for patent office in 2012 .Then MR Chaitanya Prasad slightly worked on it till 2015. Then Mr OP Gupta taken charge of cgpdtm he done nothing for implementation of MFCS even though during his period patent office has done extra ordinary work in terms of issuance of new FER as well as amended applications..
    Everyone speaks Patent office plays vital role etc but no one bother about the worst HR and promotional aspects in the Patent Office.
    Huge targets for controllers ( 45 FER and 15 disposal) as well as examiners (30 applications) in 20 working days and the numbers set by the office clearly violating the affidavits given by DIPP in Delhi High court in the matter of nittodenko vs unio of India as well as hobble minister reply in parliament ( 100-120 applications per annum)..Reality no one speaks…Stake holders are quite happy as their work is getting easier with such office targets…. No one is ready to fight for such genuine issues by filing PIL

    Reply
    1. IPR Guy

      Quality of examination is worst in the WORLD. Many Examiner and Controller do not know any thing about the invention claimed. They only know to harash the applicant by raising non-sense objections. How can they expect them to be called “Scientist”. Joke of the year.

      Reply
  2. The Anonymous Voice

    It has been a long since any post regarding administrative and HR issues of the IPR Office is published on SpicyIP. It is heartening to see that stakeholders are taking interest in this domain.

    The situation inside the office is pathetic, not only there are huge targets, no promotional avenues for Examiners joined in 2016 and 2019, poor working ambience where Examiners, despite being Group A officers are made to sit in BPO kind of arrangement, there is also a threat of spoiling service records. For a government servant, there is no option to switch to another company when relations with the boss are strained or when service records are spoiled.

    In such a situation, when any Examiner OR controller is unable to generate “expected” output, there is a threat of undue transfer and harassment and insult in form of PIP (performance improvement program).

    Due to high targets, it is an unfortunate reality that many of the applications are being cleared with minimum application of mind. The implication of such grants in future innovations is a dreaded reality that is yet to be observed.

    Reply
  3. Sathyapaul

    The quality of examination reports and decisions issued by Indian Patent Office is worst in the whole world. For National Phase applications, the reports will have nothing significantly more than Written Opinion/IPRP issued by PCT and for Ordinary applications, irrelevant citations are found in most cases. Most controllers don’t even seem to have knowledge of the subject of the application they are dealing with. Irrelevant objections under section 3 and most nonsensical objections under section 10 in hearing notices which are raised with no reasons and facts are most often and usual. I must be very frank in admitting that since we sit at the other side of the table, we don’t complain about the quality as what matters to us most is quicker disposal of application. In fact, no stake holder complains about the quality of output generated by patent office – examination reports with content copy pasted from elsewhere. and controller’s decisions which are just one liners granting the patent etc. For whatsoever reason, its very clear that quite a few people in the patent office are not doing their job properly and the only thing that mattered to them at the end of the day is clearing the pendency by whatsoever means. In the mad chase of targets, these people have forgotten to do justice to their job, are working like clerks blindly going after only numbers, doing only copy-pasting work with no application of mind, blindly obeyed the targets set by office but now they want the MFCS scheme meant for ‘Scientists’. Well I am not against suitably incentivizing officials but the quality of output from patent office makes me feel the officials of patent office are more of administrative clerks, and not ‘scientific’ staff. Why else, the target for them would be ‘objective’ and in terms of absolute numbers when Patent Office itself is charging money for applications based on number of claims and pages of specification inferring that the time invested in an application would be proportionate with the content and number of claims? May be its time people who are after incentives and promotions should introspect whether or not they are doing their job properly in the first place for being paid from hard earned tax payers’ money!!

    Reply
    1. The Anonymous

      Valid observation.

      This reply is from the ‘other’ other side of the table, it is alleged that quality is worst, and the stake holders are silent because they want quicker disposal.

      You have pointed out “ doing only copy-pasting work with no application of mind, blindly obeyed the targets set by office”.

      Do we have any other option? Are you suggesting that Examiners and Controllers should disobey target related order?

      Pls bear in mind that no government servant can disobey his boss and live peacefully. There is no option of joining other company. Once service records are stained, they are stained.

      The fact is, till now, I have not seen any stakeholder raising issue of quality. However, issue of pendency and long disposal time has been discussed publicly and also in stakeholders meetings.

      Since, our superiors are not getting any input/complaint regarding quality, they are focused only on quantity and disposal time I.e. the issue which was raised many times. Nitto Denko Corporation Vs Union of India is one of such incidences.

      In fact, Patent Office is well equipped for quality reports, you may see our ISA and IPEA reports. If stakeholders want same quality in our examination reports and orders, they should start raising demand for the same.

      *Please bear in mind that while you bring latest technology and innovation to us, we are not exposed to any kind of technical training/sessions where we can upgrade our scientific knowledge. Is it humanely possible to understand the “invention” just by reading cleverly drafted specification, wherein the purpose of the applicant is to “cover” the invention that too without “disclosing “ it?

      And regarding MFCS issue, patent office was assessed to be scientific office by Team of Scientists from DST. Therefore, I request that this may not be discussed and questioned just because of quality of reports. Whether or not citations are relevant, whether or not officers have knowledge in subject matter, these questions should be raised in case to case basis so that a solution is carved out.

      Everyone deserves progression in career, whether public servant or corporate employee, even a businessman aims for higher profit year after year. So what is wrong when public servant wants promotion policy for himself/ herself?

      We are in this together. On this side of table, we are reeling under pressure to clear pendency, and on your side, you are tired of quality of reports.

      #I will agree that we need introspection and ask ourselves the question “whether we are doing our jobs properly “ but, if the answer is no, can you recommend a solution in which we are not disobeying the order and we get to go home after normal office hours, like every other human being, and be with our family?

      P.s.
      #awaiting reply.
      *pls keep in mind while replying.

      Reply
    2. RR

      “……..the quality of output from patent office makes me feel the officials of patent office are more of administrative clerks, and not ‘scientific’ staff. Why else, the target for them would be ‘objective’ and in terms of absolute numbers when Patent Office itself is charging money for applications based on number of claims and pages of specification inferring that the time invested in an application would be proportionate with the content and number of claims?”

      You have no idea how the performance is calculated.

      Though the office collects fees on the basis of the number of claims and pages, it does not matter, whether there is 1 claim OR 50 claims, there are 10 pages OR 1000 pages, the disposal is simply treated as 1 while evaluating performance for Examiner/Controller.

      We are not administrative clerks. It is just how our so-called “senior officers” have suggested mechanism of evaluating the performance which makes us run for the numbers.
      The irony is, those who are advising the CGPDTM in setting the targets and evaluation mechanism, themselves are not required to do Examination & Grant work. So they act as per their whims and fancies. They are suggesting rules, which they themselves have not to follow. What do you expect in this situation?

      The absence of rotation in officers assisting the CGPDTM is the root cause of this situation.

      Have a little compassion. Maybe you are a very qualified agent, but can you, by a distant dream, imagine maintaining quality by Examining 30 applications in a month, that too of different streams. Can you write a reasoned speaking order, if you were to dispose of 30 applications in a month? (1 disposal is treated equivalent to 3 FER for controllers)

      Reply
  4. Tyty

    Aim of patent office only to dispose the patent cases..he never focus on quality of patent because of that all foreigner applicant are getting patent as 80 -90 % patent numbers are belong to other than India country.

    If examiner and controller do proper work …60% of Patent will not grant in india. But system made in such way that whenever u do quality job ….u will get show cause notice, transfer, u will not get foreign trip, u will not get basic facilities….there will harassment from all sides…

    So in future….there will lot of legal case or infringement cases against Indian industry or companies…. .Only foreign company will take monopoly in almost all sector….that will incraese indirectly cost of product…& this is due to some of 3 to 4 officers sitting on higher post …..they dont know what they are doing …..so they created atmosphere in such way that every application will get grant in india…..

    Reply
  5. Prateek

    To the angry Stackholders,
    Instead of showing anger and frustration here and there, talk to the authority about these issues. Put your views on the quality of the examination. The examiners and controllers are not single handedly responsible for the poor quality, stakeholders like you are also equally culprit who don’t express their views on right platform.
    And before doing anything first study the role of stakeholders in any organisation.
    Thank you!

    Reply

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