We recently received an email from CSIR objecting to one of my hearsay comments in an earlier post on the quality of prior art search being provided to the Patent by the CSIR.
My statement was as follows:
"The most interesting submissions, in my opinion, is from the 'Officials of the Delhi Patent Office'. Not only have these officials questioned the practice of outsourcing examinations to the CSIR, they have also criticized the quality of examinations conducted by the CSIR. These officials have also made some interesting recommendations on improving the internal systems of the patent office."
The document which I was referring to was a submission by Delhi Patent Officials to the DIPP. The 'criticism' that I referred to was the following extract:
"While the efforts taken by the department to strengthen patent offices in recent past is praiseworthy, the initiative to outsource prior art search is not proving fruitful, for want of statutory mandate and more particularly due to lack of any search analysis on novelty and inventive step by URDIP, CSIR as the searchers are sending only the cited document number which is of no practical use to examiners. Further the report send by CSIR are not in user friendly format requiring double time consumption by examiners. The Patent Act provides for search and examination to be conducted by the same examiner – a practice which even EPO has recently adopted under their BEST (Bringing Examination and Search Together) practices. As stated above, the search reports received from CSIR hardly serves the required purpose as the concerned examiner has to conduct fresh search for assessment of novelty and inventive step to satisfy himself as mandated under statute. Therefore no outsourcing can be probably thought of without bringing suitable changes in the statutory provisions. Alternatively outsourcing agencies for digitization, searches should be brought under CGPDTM on the pattern of JPO as internal agencies working for CGPDTM."
The following is the clarification/rebuttal that we have received from CSIR:
"CSIR-URDIP is not conducting the examination of patent applications. The scope of our services is to search for prior art. DIPP also in its discussion paper has clearly stated that ³The Department had taken an initiative to outsource some part of the prior art search of the Patent office to CSIR.²
The scope of services and format of report was discussed and finalised in consultation with the office of CGPDTM.
Prior to entering into a MoU, we had conducted a pilot for the IPO. The results were evaluated by the team of examiners and they were discussed at length with CSIR-URDIP team on a case by case basis. We were specifically asked not to write any comments about novelty or inventiveness of the invention.
We further wish to state that up till now no feedback has ever been received from Delhi patent office on any of the search reports submitted by us in spite of our repeated requests. If they had any comments or feedback (positive or negative), they could have communicated the same to us in the first instance. Without knowing the background and context of the whole matter, it is unfair on the part of commentator to question the quality of work done by us or highlight only a particular portion of certain document."