DEL HC COURT OVERHAULS THE PROCESS OF APPOINTMENT OF PATENT EXAMINERS UNDER THE PATENTS ACT, 1970

In this article we shall be discussing the case of Bharati Rathore vs. Union of India And Anr. [W.P. (C) 5229/2019 & CM Appl. 23128/2019] wherein the aspect of current procedure being followed by the Controller General of Patents, Designs and Trade Marks (“CGPDTM”) for the purposes of appointment of Examiner of Patents and Designs has been discussed. Moreover, we shall also be discussing the criticism of the Hon’ble Delhi High Court upon the current practice being followed by the CGPDTM for the purposes of appointment of Examiner of Patents and Designs.

For informative purposes, in India the Patent Office has four categories of examination groups on broad areas of specialization namely:

· Chemistry and allied subjects

· Biotechnology, microbiology and allied subjects

· Electrical, electronics and related subjects

· Mechanical and other subjects

The role of Examiner of Patents plays a crucial role in the process relating to grant of a Patent Application. It is the duty of the Examiner of Patents to scrutinize the patent application assigned to him / her for examination and conduct a substantive investigation to ensure that the claims mentioned in the new Patent Application are novel and qualifies the test of patentability prescribed under The Patents Act, 1970. Thus, it is very much necessary to ensure that the Patent Examiner is a competent, skilled and capable person as Intellectual Property such as Patents are essential for safeguarding rights qua emerging technologies, new process or formulation of chemicals, medicines etc. in favour of their inventors and eventually promotes technical advancement and development of a country.

This is why it is very essential for the CGPDTM to recruit highly qualified and competent persons as Patent Examiners.

In the aforementioned case of Bharati Rathore Supra the Hon’ble Delhi High Court allowed the writ petition filed by the petitioner namely Ms. Bharati Rathore conferring her appointment as Examiner of Patents and Designs in Bio-medical engineering (field relating to Biotechnology) by treating the petitioner’s B.Tech and M.Tech Degree in Cognitive & Neuroscience equivalent to Bachelor’s Degree in Bio-Medical Engineering.

After disposing off the said writ petition, the Hon’ble Delhi High Court observed that the CGPDTM was not following the recruitment policy of Examiner of Patents and Designs as per the recommendations of the committee constituted on 24.12.2008 under the chairmanship of Justice Allah Raham (Retd.) which emphasized weightage on personal interviews as well apart from conducting written examination. Contrary to the said recommendations by the committee headed by Justice Allah Raham (Retd.), CGPDTM had dispensed with the interview process for the purposes of appointment of Examiner of Patents and Designs.

The Hon’ble Delhi high Court further formed a prima facie view that the recruitment for the post of Examiner of Patents & Designs by written test alone is not in public interest and framed the following questions for consideration:

I. Whether an Interview is necessary for the post of Examiner of Patents and Designs considering that the Examiner of Patents and Designs is a key entry level post in the Patent Office having quasi-judicial powers in relation to processing of application and grant of a patent; and higher supervisory posts above Examiners viz., Controllers of Patents and Designs are all filled through 100% promotions as recommended by Justice Allah Raham Committee.

II. The respondents have deposed in their affidavit dated 30th April, 2021 that an interview is not necessary for recruiting the Examiner of Patents and Designs because the work of the Examiner primarily requires technical knowledge which can be best assessed by written test and the Examiner has not to interact with the public. This submission is not only incorrect but also misleading considering that the Examiner is the feeder post for Controller of Patents and Designs who exercises quasi-judicial powers and has to interact with the patents stakeholders. Whether any action is warranted against the Officers of the respondents for misleading this Court and taking an incorrect stand contrary to the well settled law?

III. Whether the recruitment of Examiner of Patents and Designs by written test only is discriminatory and violative of Article 14 of the Constitution considering that UPSC is conducting the recruitment for administrative services by two stage written examination followed by interview. On 20th April, 2021, Mr. Abhindar Joshi, Director of DoPT, Ministry of Personnel, Public Grievances and Pensions submitted before this Court that the Central Government took a decision on 01st January, 2016 to dispense with the interview only in respect to Group B – Non- Gazetted posts and below, meaning thereby that the interview would be mandatory for Group A posts.

IV. Whether the directions for uniform recruitment by two stage written test followed by interview for all Group A Class-I posts are warranted?

The Hon’ble Delhi High Court has forwarded above questions to be adjudicated by the Higher Bench on account of public interest being involved so that it can be decided authoritatively.

This is a welcoming move by the Hon’ble Delhi High Court considering the ground realities in the Patent litigation matters as examination and prosecution history has always been the subject matter of challenge before the civil courts in the case relating to infringement of Patents. It has been the usual complaint of the lawyers that the patents are not examined properly or have been inadequately considered so far as meeting of objections with respect to novelty and patentability of the invention is concerned. It is also very usual in the civil courts proceedings that the complaints are received through counsel with respect to Examiner being incompetent \ enough to examine the Patent application and the process was given go-by by the Examiner which results into intensive litigation before the courts. It is therefore the courts who are left with the complicated questions to be answered relating to the Patent application which infact ought to have been determined by the Examiner. Therefore, if the competent persons are hired at the ground level and extensive examination enquiry occurs then surely it will reduce the burden of the courts and the courts would be much more reliant upon the examiner’s concern.

All the eyes should be now before the Higher Bench and it would be interesting to see what the courts decide on the aspect of weightage to be given to interviewing requirement while appointing the examiner to the Patents.

By Sushant Singh and Kunal Khanna Advocates.