By Kaitlin Mara for Intellectual Property Watch
Two years after India’s implementation of international trade rules on intellectual property rights, a lawyers group is rekindling a decade-old push to organise India’s patent applications into an electronic database.

IP law blog (“blawg”) Spicy IP has sent a petition to the India Patent Office (IPO). Citing India’s status as an information technology leader and its emerging role as a patent “trendsetter” for the developing world, the petition calls on the IPO to “create a comprehensive database” of patents, including full specifications and claims. It also asked that the IPO to “upload patent office decisions,” which are currently confidential, in order to foster transparency and public accountability.

“You will be shocked to know,” says Shamnad Basheer, a research associate at Oxford University’s IP Research Centre who contributes to Spicy IP, “that the process of having a digitised database began in India sometime in the 1990s.” The UN Development Programme provided funding to the National Informatics Centre, a part of India’s Ministry of Information, to create an electronic patent database, Basheer said.

India’s implementation of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005 introduced pharmaceutical patents to India, increasing the number of stakeholders in the patent system. These stakeholders need “timely information on patents,” according to the petition.

Without a database, searches for patent information become complicated, advocates say. Tahir Amin, a patent lawyer at the Initiative for Medicines, Access, and Knowledge (I-MAK), a non-profit organisation that evaluates the quality of pharmaceutical patents, said it took his team of five all of 2005 and early 2006 just “to identify the key ten to fifteen ARV [anti-retroviral] drug patents applications” I-MAK was planning on challenging. At the time, the only way to access information was to download copies of the IPO’s weekly journal, which are posted online, and search each individually. Amin acknowledged there were improvements in search mechanisms in the last year, but said that difficulty remains.

In November 2006, an independently run, free database called Big Patents India, was launched by Bhaven Sampat, a professor of economics at Columbia University’s Mailman School of Public Health, who converted the IPO journals listing post-TRIPS patent applications into an online, searchable format. While Sampat is planning to expand the database, Big Patents India does not have patent information prior to 2005, nor does it contain full patent specifications, which Sampat said are difficult to get in India.

The India Patent Office could not be reached for comment at the time of writing. India’s National Informatics Centre maintains a patent database, and there is a pay subscription service called Ekaswa, but according to Amin the information available is too limited to be of use.

It is possible to order a full-text patent from the IPO, but according to Amin it can take up to a month by correspondence, precious time when considering filing an opposition, he said, and showing up to the office in person can involve a wait of several hours.

Finding Prior Art

The difficulty finding India-specific patent claims is not a major barrier to determining freedom to operate, at least on pharmaceuticals, argued Washington, DC patent attorney Christopher Ohly. Most post-TRIPS patents filed in India would have been cross-filed at the US Patent and Trademark Office and/or the European Patent Office, both of which have full-text online databases, he said. However, he added, as India’s pharmaceutical industry, and thus the number of India-specific patents, continues to grow, it could become a concern.

More at issue, Ohly said, is determining prior art. Basheer notes that patent examiners are under time pressure; one he spoke to said he never bothered checking for patent applications unavailable online. This means “we could end up having a new patent for a technology that has already been patented in India years before,” Basheer said, just because the granted patent is India-specific and not online.

Ohly cautions that a database would not solve all problems involved with finding prior art, which is as often located in academic journals or industry publications as it is in prior patents.

A pharmaceutical industry spokesperson said that the level of financial flexibility at larger companies ameliorates some troubles faced by NGOs. Having access to proprietary patent databases, such as at Thomson Scientific and Chemical Abstracts, and the ability to hire a team of specialists to focus on locating prior art before submitting an application, makes the push for a free public database less important for industry than for public-interest nonprofits, the industry source said.

Does Lack of Transparency Hinder Use of Opposition Mechanism?

India’s patent law has particularly stringent rules on patentability, mandating that without significant efficiency improvements, “the mere discovery of a new form of a known substance … of any new property or new use for a known substance, or the mere use of a known process, machine or apparatus” does not constitute a patentable innovation (Patents Amendment [pdf]).

Because of this provision, a patent valid under US or European patent law might be invalid under India’s. Lack of readily available data hinders the opposition mechanism, Basheer said, adding, “In order to decide whether to oppose a patent, I need access to the complete specification, including ‘claims.’”

Since the TRIPS agreement went into effect, the IPO has published 37,000 patent applications and had only 66 oppositions filed (of these, 10 have been upheld, two rejected, and the rest await a decision), said Basheer, who believes that part of the reason for the low percentage of oppositions is the difficulty acquiring full patent specifications.

The industry source cautioned that it would be wrong to assume that patents on pharmaceuticals are bad, and emphasised that industry has a desire for quality, valid patents. Sampat said that the opposition mechanism helps ensure that quality; its goal “is not to oppose intellectual property but to bring third party expertise to bear on patents in order to nip bad patents in the bud.”

Of greater concern, according to Basheer, is the fact that the comments of India’s patent examiners and controllers are kept confidential. The US Patent and Trademark Office and the European Patent Office publish their examiners’ notes to allow stakeholders to “see what arguments or objections are raised or amendments” are added to an application, said Amin.

The IPO strongly opposes public release of examiners’ comments. Its Right to Information Act asserts that such notes will be made available only under court order.

Kaitlin Mara may be reached at info@ip-watch.ch.