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’
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.