Rules 137 and 138 of the Patent Rules: Where and Why is the Confusion?

Rules 137 and 138 of the Patent Rules, 2003 have been in the news thanks to a decision of the Madras High Court delivered in January this year. This decision has already been discussed elsewhere; that said, I think it needs a deeper reading because the Court doesn’t seem to have gone deep enough into the relevant provisions.

Let's discuss the provisions themselves to understand the flaw in the Court's approach.

Rule 137. Powers of Controller generally- Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

Rule 138. Power to extend time prescribed- (1) Save as otherwise provided in the rules 24(B), sub-rule (4) of rule 55 and sub-rule (1A) of rule 80, the time prescribed by these rules for doing any act or the taking of any proceeding thereunder may be extended by the Controller for a period.

While Rule 137 refers to the Controller’s general powers with respect to any irregularity in procedure, Rule 138 specifically vests the Controller with power to extend time. In a way, Rule 137 can be compared to Section 151 of the Code of Civil procedure (CPC) which vests a Court with inherent procedural powers.

Similarly, Rule 138 can be compared to Section 148 of the CPC which deals with power to extend time. If this comparison is justified, the principle that has been conventionally and rightly applied with respect to Section 151 of the CPC is that the general/inherent powers cannot and must not be interpreted so as to militate the express word of the CPC.

In other words, a Court cannot employ its inherent powers under Section 151 to render nugatory any other express provision of the CPC (We have discussed this earlier on the blog).

Analogous application of Rule 137 of the Patent Rules too demands that Rule 137 cannot be employed to run counter to any other express provision of the Patents Act.

What is the specific consequence of this proposition with respect to Rule 138? Rule 138 states in no uncertain terms that for an applicant to be entitled to the one month extension envisaged in the rule, the application for extension of time shall be made within the prescribed period.

The reference to prescribed period obviously has to mean the period excluding the one month extension. This is clearly established from the title of Rule 138 which reads “Power to extend time prescribed” (title of a provision is an internal aid of interpretation).

For instance, let us consider the period prescribed by the Act for an applicant to enter the National Phase application in India from the PCT international phase. Rule 20(4)(i) prescribes 31 months as the period within which a National phase application may be made. In other words, any extension under Rule 138 must be over and above the 31-month period.

However, the request for extension under Rule 138 must be made within the prescribed period. Therefore, if an application for extension of time in the case of a national phase application is not made within the prescribed 31 months, a month’s extension under Rule 138 is simply not available for the applicant.

It must be borne that Rule 138, as it exists today, is the result of an amendment vide notification dated December 28, 2004. Prior to the amendment, sub-rule (2) of Rule 138 read as follows:

(2) Any request for extension of time made under these rules shall be made within the extendable period by request unless otherwise provided in these rules.

The rule was amended to substitute “extendable period” with “prescribed period”. Strictly speaking, there is no difference between “extendable period” and “prescribed period” since the former refers to period that can be extended, which is the same as “prescribed period”.

However, probably to avoid confusion, the legislature deemed it fit to use “prescribed period”, making the amendment a clarificatory one.

The essence of all this is that no application for extension of time can be entertained if the request for extension is not made within the prescribed period. Further, what must also be taken into consideration is that Rule 137 cannot override Rule 138 since the latter specifically addresses extension of time (a specific provision usually prevails over a general provision).

Critically, an extension is not permissible with respect to a national phase application since Rule 20 categorically states that a national phase application will be deemed to have been withdrawn if it is not made within 31 months. This means the provision is set into motion automatically, with no room for exercise of discretion by the Patent Office or the Court.

Considering these reasons, I am sure most practitioners would agree to disagree with the Madras High Court’s decision.