Interventionon Quality of Patents& Related Documents at SCP/24

Madam Chair,

On the agenda item quality of patents, including opposition systems &related documents(SCP/17/7, 8 and 10, SCP/18/9, SCP/19/4, SCP 20/11 rev. and SCP/23/4), the Delegation of India reiterates its views expressed in the last SCP session. We restate that patent quality is not finally determined by instrumental efficiencies, but by appropriate application of formal &substantive issues of respective States commensurate to their laws. In our opinion, the problem with deterioration of patent quality is not mainly due to inadequate infrastructure, but to the lowering standards of patentability &examination practices. Therefore, to advance the discussions on quality of patents, the Committee needs first to advance a common understanding on what is meant by “quality of patents”, since said terminology might have many different meanings.

In our opinion, the concept of worksharing is nothing to do with the patent quality and the quality of search &examination needs to improve substantially in conformity with the policy objective of a country so that we do not create huge social cost of granting patents to insignificant improvement that only createbarriers for dissemination of knowledge &transfer of technology. We therefore, restate that mere arithmetical application of standards applied in one country could not be solution in another and automatic validation of patents granted in other jurisdictions would not enable India to grant the patents in conformity with the standards as prescribed in its Statute Hence, the mandate of Indian delegation is to resist any attempt of harmonization of patent laws in the name of worksharing under the pretext of quality of patents and also, to express our concern for the norm setting in future.

Having said that, we would like to reiterate the proposal for further studies on different thresholds in national patent legislations for “sufficiency of disclosure” asa problem linked to the patent quality leading to patent backlogs requiring further work by the examiners.The study may further be enhanced to probe the role of “sufficiency of disclosure” in the context of transfer of technology, since the transfer of technology vis-à-vis the sufficiency of disclosure are alsolinked to the patent quality.

Madam Chair,

With respect document SCP/23/4, we draw the attention to US Delegation’s reiteration, in the 23rdsession, that the reuse of search &examination results under PPH was carried out while respecting the national sovereignty of participating offices, since the search &examination of the application continued to be performed by each office according to its national law and no deference was given to patentability determinations that were reached by the other offices. The Delegation was of the opinion that because of those safeguards, concerns that the PPH called for the automatic acceptance of patentability decisions reached by another office were unwarranted. Nearly similar opinion was expressed by other delegates like UK.

We would also like to state that, although Indian Patent Office utilizes the report of foreign patent offices, but as per the Indian Patents Act, our examiners are duty bound to do the search &examinations by themselves.

Madam Chair,

As long as, the work of SCP remains within the confines of the study and as long as there is no attempt of any harmonization, in our opinion, there is no threat to the patent system.

Having said that, let the work sharing be bilateral, or trilateral, or so on, but it or any further proposed study should not be construed as a tool for harmonization of patent lawsor for norm setting in future.However, on several occasions in the past, it is observed that such forms of PPHs have been recommended by different Offices, in which the third Office remains obliged to validate the grant, if first two Offices give a favorable report. Therefore, we have our apprehensions on the proposed study.

With regard to the US proposal on a study analyzing the benefits & possible impediments of making national collections of prior art available to all officesthrough an IT portal, we refer the concerns by TWN on the traditional knowledge related databases and state that opening of the databases like Indian TKDL, as being used by India Patent Office, will cause rampant bio-piracy.Nevertheless, India has already shared its TKDL database with the leading patent offices for the search & examination, but not made it public to avoid the possibilities of bio-piracy.

Thank you, Madam Chair.