India: Patent Office: An Underused Research Collaborator

Last Updated: 10 May 2017
Article by Gaurav Arora

The objective behind the establishment of patent offices around the world has been to implement a mechanism for incentivizing innovation. The quid pro quo1 is: a limited period of monopoly in exchange for the earliest complete disclosure of the information about the new innovation. It is highly desired that there is fast dissemination of this new information so that the subsequent innovators work more efficiently by building upon what has already been done lest they start reinventing the wheel. This is very critical for faster promotion of science and art.

Issue: Whether the current patent granting system as practiced by the various major patent offices of the world, wherein any new invention has the burden of overcoming the patentability criteria of present, specific, substantial utility and non-obviousness threshold, is successful in implementing the Intellectual Property clause2 by enabling the promotion of useful arts and science. Or even if it is, could the patent offices do something more for a quicker progress of technology. The author has tried to address this issue by way of the following hypotheses. The solution is not aimed at replacing the current patent system or the procedures; the solution is rather found within the working of the current system and rather aims at using the current patent offices' infrastructure more efficiently in promoting the progress of science and arts.

Non-Obviousness Criterion

Hypothesis

Consider the following hypothesis: Let us represent the advancement in a certain technology field 'S' along the y-axis and time (happening of certain events over a period of time) along the x-axis. Let us further assume that the advancement in technology 'S' is at a level, 'Ys' at the time of happening of 'Event 1.' This level Ys to which the technology has advanced at a certain point in time in question is the sum total of all the knowledge available in the field 'S.' In patent law parlance, it is referred to as the Scope of prior art. Establishing the scope of prior art is one of the steps while evaluating the invention for obviousness. This requires consideration of not only patent documents but everything else including publications, papers, products, public knowledge, public use, etc.

Event 1: Suppose 'A' files a new patent application for an invention in the field 'S.' A has to meet the criteria of patentability which among others include the non-obviousness/inventive step criterion3. The obviousness criterion is based upon the existing scope of prior art, the knowledge and creativity of a PHOSITA4, and other secondary factors5. The obviousness criterion may be represented by 'Yo' on the y-axis. That is to say, A has to supply a technological advance equivalent to 'Yo' over and above 'Ys' in order to overcome the non-obviousness hurdle and consequently get the patent granted.

Now A's invention has a technological advance measured at about 'Ya' over and above Ys. Although A believes in good faith that his invention is non-obvious6 and that Ya far exceeds Yo, the examiner 'as usual' does not think so and rejects the application because of falling short of the obviousness threshold 'Yo.' So, mathematically, according to the examiner,

Ya < Yo

The examiner rejects the application for being obvious in light of the existing prior art providing reasons as to why it is obvious.

No incentive: The quantum of technical advance, Ya, that A brings to the table is not sufficient to meet the patentability criteria and has not led to a patent grant and therefore, there is no incentive for A to come up with this technical advance Ya and add it to the common pool of knowledge. Hence, it may be apt to call the patent system, a quantum reward system which offers to reward (by protecting) only when a certain minimum quantum of advancement in technology is provided.

Raising the bar: This non-patentable technical advance Ya of A, in any case, is added to the common pool of knowledge and becomes part of the prior art (via patent application publication, public use, commercialisation, or most likely abandonment/dedication to the public by the inventor because a non-patentable invention is worthless for him). It may be appreciated that by adding the technical advancement equivalent to Ya, A has increased the scope of the prior art.

New scope of prior art:

Ysa = Ys + Ya

Any subsequent inventor will have to overcome the obviousness threshold Yo over and above this raised scope of prior art Ysa.

Event 2: Suppose a subsequent inventor B now files another patent application in the same field 'S.' Further, it so happens that the technical advancement provided by B, say Yb is again less than Yo and it meets with the same fate.

Event 3: Inventor C files a new patent application and provides Yc, which is again less than the required Yo.

Now, these subsequent technical advancements Ya, Yb, and Yc individually have all been deemed not meeting the requisite non-obviousness threshold Yo. As a result of which, all of applications A, B, and C get rejected as being not patentable, which means no incentive to the inventors for their technical advancements Ya, Yb, and Yc. Since the current patent system fails to incentivize7 A, B, and C, it leads to a losing situation not only for A, B, and C8 where each one of them is rejected a grant because of the efforts of the one(s) coming before them, but also, for society as a whole9. As explained above, each predecessor is making life for the successor difficult when no one gets any incentive/grant. All three inventors in the hypo above have actually added something to the pool of existing knowledge and have not received any reward or recognition for it.

However, it may happen so that the technical advancements Ya, Yb, and Yc put together may be greater than the requisite non-obviousness threshold Yo. That is, if the subsequent inventors could somehow collaborate to present a combined disclosure, they may be able to overcome the non-obviousness threshold Yo and consequently get incentivized for their contribution. But who could be an apt authority to take on this responsibility of arranging for the 'rendezvous!'

Patent Examiner's Role

When a patent application is filed with the patent office with proper fees complying with all the formalities, the patent office is under an obligation to examine the application with respect to the patentability of the invention. An office action report rejecting the application is generated with a list of references upon which the patent office bases its decision.

By generating an examination report for every application that is examined, the patent office is simultaneously performing a huge task of analysing10 a lot of research work. The examination reports generated by the patent offices are nothing but review reports in the form of examination reports of the latest research or innovation happening in a particular field filed in the form of patent applications.

Will not it be a great idea if the reports so generated as a routine activity are made open to the public, especially the researchers in the field to build upon?

Would not it be still better that the patent office using its existing system can facilitate researchers to build upon each other's work?

Let us try to do that...

Merging Requirement11: If an examiner or a group of examiner come across two or more such applications (such as A, B, and C in the hypo above), which seem obvious standalone with respect to the existing prior art, but the examiner believes, may be granted as a combination when filed as a single disclosure, he may institute proceedings which can bring the inventors/applicants (A, B, and C) together. It can work as something analogically opposite to the divisional patent application concept: where when an application has more than one invention, the examiner issues a restriction requirement and demands that the same be filed as separate divisional applications so as to have one invention per patent application. Here, the examiner can suggest that the two or more disclosures which are disclosing less than one invention (so to say) may be combined together to make one invention which can then be granted.

CIP Route: In another scenario, the patent office may allow later coming inventors such as B and C to file continuation-in-parts (CIP) application to an already published patent application of A which has been rejected as obvious. Applications B and C may be filed as normal applications with a note mentioning intention on part of the applicants to be a CIP to A. A may be given the prerogative to accept all or one of the later filed special CIPs. Both A and the later inventor may own the CIP by assignment or ex-gracias grant.

Lesser Patents – a critical analysis

The instruments such as utility models, petty patents, minor patents, etc. available in countries like Germany, China, Japan and Australia, have a lesser threshold for obviousness, which is equivalent to lowering the threshold 'Yo' for obviousness in the hypos above. There are two different levels of inventive-step/obviousness threshold for the two types of protection. This might seem like a feasible tried and tested solution.

However, in today's world of small incremental improvements where non-obviousness remains a subjective criterion which is hard to define, it is really difficult to understand that how it is possible to apply such a fuzzy threshold at two different levels.

Further, protection, even if for a lesser duration, is a protection after all. By providing a protection for something which falls short of meeting the patentability criteria, the patent offices in these jurisdiction have been allowing the subsequent inventors to encroach upon the imaginary territory12 of the patent owners. A lesser patent holder coming later may be able to exclude an earlier patentee from what he always thought was his territory or at least which he believed was not for anyone to claim because it was obvious to PHOSITA.

Utility Criterion

The above hypo has been described with respect to the obviousness criterion but it may be apparent to a Patent Attorney skilled in the art13 that other embodiments may be equally feasible, and specifically with respect to the utility criterion.

One may patent only that which is useful. 14

The basic quid pro quo contemplated for granting patent monopoly is benefit derived by the public from invention with substantial utility.15

The policy behind not allowing patents on something which does not have a present, specific, practical and beneficial utility is that it will deter people from figuring out the use for the invention later. The patent law does not want to give monopoly upon knowledge before the use for such knowledge is found. If a use for the invention already patented is found later, the person who found the use later will not have sufficient motivation because he will be pre-empted from using the product because a patent already exists.

Further, the inventor in order to get a monopoly grant from the State should contribute something to the pool of knowledge which is new and useful to the society. Contributing something which is merely new and not useful does not deserve a monopoly. Knowledge which has no application should not be the subject of someone's monopoly.

Patent Examiner's Role

In cases where the invention lacks a present, substantial and specific utility, especially in cases involving chemical/pharma inventions, the patent office may acknowledge the invention with a special notification and be instrumental in collaborating research in a way that subsequent researchers feel incentivised while coming up with a use for the invention. It may not be possible to name such subsequent researchers as one of the inventors under the existing patent law, but an ownership share in the form of compulsory royalty/assignment may be possible.

Suspended Examination: A patent application filed by an inventor A for composition X may be examined and an office action may be issued not rejecting the application but putting it in indefinite suspension until a use for the composition is found. There is no final rejection and hence no appeal.

A may opt to make his application public with an undertaking/declaration that whosoever comes up with a use for the invention will be:

  1. Given a certain royalty when the patent is granted; or
  2. Made joint assignee/inventor(if legally possible)/owner

There may be provisions to adjust the term of the patents so granted too.

Proposed solution – Advantages:

  1. Motivation to Disclose: Inventors will be more motivated to disclose and add to the public knowledge without fear of not getting any rights because of not meeting any particular patentability criteria when the patent is rejected. This will really help the progress of art and science.
  2. Record of research work: An authoritative record of research activities and prima facie evidence for ownership of the idea.
  3. Identification of Research Direction: Even before the later inventors (B and C) enter the system, without any extra effort and just by using the routine activity of an already established system, we have a report regarding the research efforts of anyone with an identification of the direction where the potential future research may be directed in that field.
  4. Reduction in number of appeals and saving of court time: It is believed that the number of appeals against an obviousness rejection where the patent office has to meet the burden of proving that the references cited not only disclose the elements in the application but also provide the necessary motivation or suggestion to combine those elements, will reduce because it will not be the end of the world for the applicant if he is willing to collaborate with other later entrants. This will certainly reduce the burden of the patent office and the courts.
  5. Pseudo Licensing: The collaboration brought about by the patent office as in the proposed solution can be seen as a form of pseudo licensing. In the hypothetical situation where all of A, B, and C were granted a patent (perhaps a utility model), then A would have been holding the main parent patent and B and C would have got what is called as a patent of improvement. This would have been a typical blocking patent issue which would have involved a lot of attorney time and money to arrive at typical royalties and licensing agreements16. This typical issue of blocking patents is taken care of at the very stage it is born.
  6. Avoid Information paradox: Since the information is authoritatively disclosed and reviewed, there is no risk of losing unprotected information while discussing with potential parties.

Criticism:

No proposed system/solution comes without disadvantages. Here is small self-inflicted criticism by the author:

  1. Examiner's workload: It is well known that the examiners at the patent offices are already overloaded with work. It is already quite a task for the examiners to reject a patent application as obvious since the Courts have made it mandatory for the examiner to justify his rejection. It will be a cumbersome if he is further loaded with the additional pressure of identifying as to which all rejected applications may be combined together to get over the threshold of obviousness. Further, how would the examiner decide which applications to choose? Should he choose on first-come-first filed basis? What if there are five application filed in a row which do not meet the criteria together and a sixth application filed subsequently may be able to cross the obviousness threshold when combined with even one of the previous applications?
  2. Subjective nature of the obviousness criteria: The subjective nature of the obviousness criteria leads the inventors to believe that even when an examiner rejects the application, he might still be able to convince the examiner and get a grant by giving up some of the ground without losing what he really intends to protect and market. Sometimes, the examiners do make a mistake and the inventors who always treat their inventions as their babies would always want to believe that the examiner made that rare mistake while deciding their case. So, not many inventors would want to take up this offer of accepting an obviousness rejection and willing to combine with later invention and would rather prefer the more tedious path of PTAB.
  3. Creativity is not simple addition: Creativity or inventiveness does not follow a linear summation rule. Creativity is a multidimensional addition to the prior art even when it pertains to a very small niche of the art. It will remain to be seen in future or if the data of rejected applications at the patent office could be analyzed that how effective this combination of rejected applications can get.

Parting Comments

Although the intricacies of the execution of the proposed solution need to be worked out, it may be possible to implement it as a pilot by giving the applicants to decide if they want to be a part of it and combine with others to promote the progress of science under the aegis of the patent office.

Footnotes

1. Patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 119 S. Ct. 304, 142 L. Ed. 2d 261 (1998)

2. mandate of Article I, Section 8, Clause 8, of the Constitution of the United States that the legislative branch "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

3. Non-obviousness and inventive-step are jurisdiction specific terms and refer to the same criterion for patentability with subtle differences, insignificant for this discussion. The author wishes to address the general policy behind the IP law, more precisely the patent system.

4. PHOSITA – Person Having Ordinary Skill In The Art is also a person of ordinary creativity, not an automaton. (KSR v. Teleflex)

5. Factors which are considered when deciding obviousness: long felt but unresolved needs, commercial success, failure of others, skepticism of others, teaching away, copying by others of the invention, etc.

6. which all inventors do and that is why they file the patent application in the first place.

7. Some jurisdictions do incentivize these inventors by providing a protection for a lesser duration. This has been briefly criticized in the note on Lesser Patents below.

8. Who are demotivated in absence of any incentive

9. People will be more concerned about meeting the non-obviousness threshold before adding their innovation to the common knowledge pool

10. Rather unknowingly while generating the examination report

11. Pun intended, analogical to issuance of 'Restriction Requirement' in cases where the examiner thinks that there are more than one invention in a single application

12. By virtue of the creative capabilities of the PHOSITA, there can be assumed an imaginary boundary extending beyond the well-defined scope of the patent. The patent owner assumes that the protection extends up to this extended imaginary boundary.

13. Pun intended, the art being the Intellectual Property Law.

14. Brenner v. Manson, 383 U.S. 519, 86 S. Ct. 1033, 16 L. Ed. 2d 69 (1966)

15. Brenner v. Manson, 383 U.S. 519, 86 S. Ct. 1033, 16 L. Ed. 2d 69 (1966)

16. On a lighter note, being a Patent Attorney, I should not be against this.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Gaurav Arora
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.