Monday, June 18, 2012
In a recent decision, the Intellectual Property Appellate Board ("IPAB") has criticized the Patent Office for a shoddy decision where the Controller had copy-pasted excerpts from two distinct publications; In one instance even the font, and spacing was the same as used in the original publication. The original case can be seen here for application number 2254/DELNP/2005.
Quotable Quote: "This is not how an order shall be passed by the Patent Office. The Controller has the duty to examine the claims and test them for patentability."
The issues that this case raises are not new. Prashant, in a previous post had emphasized on sharpening the legal skills of our Controllers. Shamnad, too, in multiple posts has discussed this same issue. And, my take on this is on similar lines of Shamnad and Prashant. In one of my previous posts, I had discussed that, "[T]hose cases where the Controller is just agreeing to formal objections raised during the FER by Examiners, should be considered by the Examiners only. There is no value addition by Controllers spending time on those cases."
This fact that Controllers write decisions where mere formal objections are adjudged, highlights two possible problems. One that Controllers are overworked, and second, Examiners too, are overworked! The reason that Examiners are overworked is because of the pending pipeline of applications. The reason that Controllers are overworked is because of they have to give decisions for every case where formal objections are there.
This system may discourage Examiners (Controllers giving decisions for formal objection cases). Issues that are raised before examiners, and require a mere cursory check to ensure compliance with the FER, should be dealt with the Examiner who issued the FER and not the Controller. A form or template like the one used in almost every other major patent office (USPTO, EPO, KIPO, CIPO) should also be used. See one my previous posts on having the usefulness of a template.
Another fallout of this particular way of dealing with formal objections, is that Examiners know that all the work in the particular case has already been done, but the credit of dealing with the case goes to the Controller. My personal opinion is that whatever may be the reason behind it, the implications on the morale of the Examiners has not been on the table at all.