Shortly after putting in place a mechanism to outsource prior art searches to Council of Scientific and Industrial Research (CSIR), the Indian patent office is in talks with premier educational institute IITs for similar ties. ?We are exploring possibilities to outsource prior art searches to IITs. We are in the process of evaluating whether they have the necessary database and expertise to conduct searches,? a senior official at the patent office told FE.
Most IITs such as the one in Delhi, Kanpur, Roorkee, Kharagpur, Mumbai already have a specialised Intellectual Property Rights cell in their institutions and run part time courses including exclusive prior art search modules for science graduates and others from time to time. Usually they offer these courses in collaboration with reputed international bodies such as Global Institute of Intellectual Property and World Intellectual Property Organization.
Recently, PH Kurian, controller general of patents had told FE, ?We have decided to send around 2,000 to 3,000 of Indian patent applications annually to Unit of Research and Development of Information Products (URDIP) for prior art searches for which we would be paying CSIR an agreed rate.?
?The rationale is to bring down the pendency rates and faster processing of application. We wanted to outsource these applications to a government agency which would have the infrastructure, competence and the experience to do the search processing. Also we are exploring similar association with other reputed government agencies,? he added .
While US and Japan patent offices have been in favour of outsourcing the preparation of search report, the European Patent Office (EPO) doesn’t take this route. Japan has outsourced search reports to independent organisations in the private sector, for many years. According to Belgian economist Bruno van Pottelsberghe de la Potterie, also a former chief economist at the European Patent office, ?The EPO has adopted a strategy that is opposed to any type of outsourcing to the private sector, as it feels it is particularly important to have the search report performed by the examiner. The implicit advantage of this practice is that it improves examiners? knowledge of the relevant prior art and, therefore, sharpens their ability to gauge the inventive step.?
The professor from Brussel further adds, ?The USPTO has been investigating the possibility of outsourcing searches since the early 2000s. The Office has started a proof-of-concept pilot project on the search reports prepared for international applications under the PCT… (in these cases) contractors must demonstrate technical and legal competence, show that there is no conflict of interest between these and other searches they carry out, and agree to maintain strict confidentiality?.
When the Indian patent office tied up with a CSIR unit to conduct the searches, a few stakeholders did raise the question of conflict of interest considering that CSIR is one of the major patent filers in the office. However, there were others who lauded the effort saying that this would decrease the workload per examiner and in turn result in faster and more efficient application processing rate. And Kurian himself maintains that there would be no ?conflict of interest? as the patent applications filed by CSIR wouldn?t be sent back to the agency?s employees for processing.
As reported by FE earlier, the patent office in a recent move has started outsourcing a limited number of Indian patent applications to a CSIR wing, URDIP to prepare Search Reports (SRs) ? a critical document that recommends whether an invention is patentable. The in-house of patent examiners would subsequently vet the SRs.