How to Destroy an Invention

My article titled "How to destroy an invention - the patent office way" appeared in today DNA newspaper. It discusses the critical issue of denying the patent applicant a right to appeal to the IPAB when the patent application is rejected pursuant to a pre-grant opposition.The same is reproduced below:

Of the myriad ways in which an invention can be killed, the unkindest of them all involves the end an invention suffers at the patent office, the institution established to foster innovation by granting patents.
The patent office has the power to refuse a patent application for an invention and such decisions are appealable: the appeal lies to the Intellectual Property Appellate Board (IPAB). But now, an absurd interpretation of the law has opened an avenue for the Patent Office to render decisions that cannot be appealed: a crass situation where the first decision becomes final.
A decision given by the patent office under Section 25(1) of the Patents Act, 1970, commonly known as pre-grant opposition proceedings, cannot be appealed to the IPAB. A weak substitute for an appeal will be to approach the high court under the writ jurisdiction, where the scope of examination is limited.
This narrow view arises from the interpretation of Section 25(1) by the Supreme Court in JMitra Co Pvt Ltd vs Assistant Controller of Patents (2008), where the right of a pre-grant opponent to appeal was considered and rejected. The court took the view that appeals against the order rejecting the pre-grant opposition are not maintainable. This meant that the pre-grant opponent did not have a right to appeal.
The issue of the right to appeal of the patent applicant against an order rejecting its application was not considered.
By a strange amendment, the Patents Act no longer provides for an appeal from an order passed in a pre-grant opposition. By an even stranger interpretation, the IPAB refuses to hear the case of a patent applicant who has suffered a rejection at the hands of the patent office.
All this may change soon, as Gilead Sciences, aggrieved by the rejection of its patent application for its drug tenofovir (Viread), is reported to have knocked the doors of the IPAB.

The power to reject a patent application
To understand why an order passed pursuant to a pre-grant opposition is treated as a non-appealable order, it is necessary to understand the scope of an order passed under Section 25(1). This section deals with the representation filed by the pre-grant opponent and how the Patent Office shall ‘dispose of such representation’. To take a view that the patent applicant does not have a right to appeal over a rejection of a patent application pursuant to an order under Section 25(1) will amount to agreeing that the controller has the power to reject a patent application under Section 25(1).
Contrary to what is believed, Section 25(1) does not grant the controller the power to reject a patent application. It does not expressly state what happens to the patent application filed by the applicant. It only deals with the disposal of the opponent’s representation.
Viewed this way, the decision of the Supreme Court makes sense as it denies the pre-grant opponent a right to appeal as law vests him with the right to further agitate its case in post-grant opposition or revocation proceedings.

Reading into the power to reject
Section 43 of the Patents Act implies that the rejection of an application by the Controller can be only by virtue of any power vested in him under the Act. The Act confers the power to reject an application under two sections: Section 15 and Section 18. Any rejection of an application, whether expressly mentioned or not, should fall within these two provisions. Though the controller does not have the power to reject an application under Section 25(1), the power has now been read into to the detriment of the patent applicant.
Reading into the power of rejecting a patent application into Section 25(1) can lead to an anomaly. If the rejection of the patent application is based on a cited prior art document, it could lead to two different outcomes based on the provision under which the order is passed. If the order is passed under Section 15, the order is appealable, as Section 117A(2) provides for appeal from orders passed under Section 15. But if on the same set of facts the order is passed under Section 25(1) by the reason that the prior art documents were supplied by the opponent, the order becomes non-appealable.

The nature of pre-grant opposition
The nature of pre-grant opposition has changed over the years. Before the 2002 amendment, pre-grant opposition used to be a proceeding between parties (inter partes proceedings) where the opponent was a formal party who entered appearance on notice by paying the official fee. The 2002 amendment to the Patents Act brought a drastic change to this nature. While it introduced a post-grant opposition, which now looks very similar to the earlier pre-grant opposition procedure, it also re-introduced a summary, refined procedure of pre-grant opposition where the opponent need not be a party to the proceedings.
Pre-grant opposition now stands democratised. The new pre-grant procedure allows any person (earlier it used to be an interested person) to informally write to the controller (no particular form or procedure need to be followed) and inform why a particular application should not be granted a patent (again no expert affidavit or any other kind of legally admissible evidence is mandated).
The new procedure does not treat the pre-grant opponent as a party to the proceeding: there is no fee for filing opposition, no procedure for hearing the opponent, and no appeal if the opposition fails.
The new procedure innovatively shifts the burden of proof on the applicant, who has to show why the application should be granted a patent in the light of the objections raised by the opponent. All this is in tune with the greater objective of granting patents efficaciously.
Any rigour in the procedure could lead to pre-grant opposition becoming lengthy affairs like what post-grant oppositions have now become. The new procedure gives the controller a great degree of discretion in deciding the opposition. With great discretion comes greater accountability, and hence to consider the rejection of an application by the controller as a non-appealable order may lead to systemic abuses.

Finality of first decision
For a variety of reasons, the Indian patent system has attracted the wrong kind of attention from the world around. Not rendering a patent applicant an effective right to appeal to a specialist appellate forum will be yet another dubious distinction which can be avoided. In the absence of a remedy in appeal for the patent applicant, the order of the controller becomes final. And that could be a death sentence for many inventions.

The Curious Case of Patent Agents

The above article appeared in today's The Hindu, Science and Technology section. The full- artilce is reproduced below:

Patent Agents are `hybrid' professionals whose area of practice is at the intersection of law and science. The nature of their work, which involves preparing patent specification (a document which embodies the rights in a patent) and prosecuting them at the Patent Office leading to the grant of a patent, requires them to have some expertise in both the law and the science.

In India, the Patent Office conducts Patent Agent Examination every year to select patent agents who alone are qualified to practice before it. The examination comprises two papers: Paper I deals with patents act and rules and paper II deals with drafting of specification and claims. The written exams are followed by viva-voce.

If successful, the candidates will join a unique band of professionals who are qualified to look into matters pertaining to the law and the science. But does the two-paper examination test competence in either the law or the science?

To begin with the examination is not an examination to test the calibre of a candidate in the sciences. The questions posed in Paper I pertain to only the Patent Acts and the Rules.

There is nothing scientific there. Paper II involves drafting exercises such as giving a model specification and requiring the candidate to draft claims out of it or requiring the candidate to recreate a specification from a set of given claims. The drafting exercise involves a legal way of putting scientific facts where the science in an invention is described to demarcate a private legal right in the invention which the inventor can exclude others from doing. Paper II also does not test scientific proficiency of a candidate.

It ascertains whether a candidate can compile scientific material in a particular manner so that it can qualify for a patent. The exam does not test proficiency in science.

Even if it does, the question arises: in which discipline of science. The practice of patent law spreads across diverse fields of science. It will be impossible to have competent examinations to test a candidate's proficiency in these areas.

Thus, these exams are not geared towards testing scientific knowledge. If anyone is still in doubt with regard to the scientific nature of the tasks done by a patent agent, one only needs to look into section 129 of the Patents Act 1970. It unambiguously prohibits a patent agent from giving any advice of a scientific or technical nature.

What, then, can a patent agent advice on a patent, if it is neither scientific nor technical?

Legal, one may say, as patent specifications are technolegal documents. Then, the Patent Agent Examination should be designed to test proficiency in the law. If it does, it is indeed an unfortunate way of testing legal proficiency. The principles of statutory interpretation, legal drafting and legal writing, legal research etc are not covered in these papers.

By clearing this examination, a person without a professional degree in law is often found duelling with a practising advocate in hearings before the Patent Office and the Appellate Board. Despite the lack of formal legal training, some of these patent agents will eventually become Controllers at the Patent Office.

The Patents Act empowers the Controllers with the powers of a civil court. This means the Controllers can summon persons, examine them on oath, require discovery of documents, receive evidence on affidavits, issue commissions etc and do a host of activities enumerated in section 77 of the Patents Act, 1970. One instance where the Controller is expected to exercise these powers is in hearing and disposing opposition proceedings.

Called to question

The variety of differing opposition decisions that the Controllers have given interpreting the scope of section 3(d) of the Patent Act, which was called to question in the Novartis Gleevec Case, illustrates the challenge faced by them in following legal precedents.

These are some of the questions that will weigh in the minds of the hundreds of candidates who take the Patent Agent Examination on 23rd January 2010. As an interdisciplinary field which requires the expertise from two unrelated areas, it is time the Government looked at the practice and regulation of patent agents more seriously.

Cheaper Tamiflu

In what is clearly a win for the battle against swine flu, costs of the H1N1 vaccine look set to fall yet again, with scientists having developed an alternative method to produce the active ingredient in Tamiflu®. The growing demand for oseltamivir has apparently led to increased pressure on the supply of shikimic acid, the raw material currently utilised to manufacture the drug. However, the new process, published recently in the American Chemical Society's Organic Letters journal, and available for viewing here, describes a process for manufacture involving D-ribose, a naturally-occurring sugar produced by fermentation, which costs only 1/6^th as much as shikimic acid.

The current cost of the drug is pegged at about $8, though these prices are more reflective of those versions manufactured by Gilead. Cipla’s version of the vaccine sells for about Rs. 50 ($1) per capsule. However, with the discovery of this new process, prices are hopefully set to fall even lower, making the drug available to a broader spectrum of the population.

Here’s an interesting question: If these scientists had chosen to patent instead of publish, what difference would it have made to the price of the drug?

iPhone Patent: Apple's Location-aware Advertising

It looks like Augmented Reality (AR) is the next big battleground for the world's information brokers. While Google's Patent Application is exploring new ways to introduce ads into Google Streetview, Apple is trying to stake its claim over the new AR frontier by obtaining patent (US Patent Application No 20100011304) pending for its iPhone which will enable advertisers know where you are. The patent allows an icon to be created for a contact on the home screen. The icon associated with an entity (say KFC) can be temporarily displayed on the mobile device based on the proximity of the mobile device (when you are hovering around a shopping mall which has KFC in it) to the entity. This allows KFC to locate iPhone users around it and relay directions, offers, discounts and deals (by Wi-Fi) on to your iPhone. The icon disappears when the iPhone user leaves the vicinity of KFC.

Patently Apple has more here.