In the last post, I had hinted at certain provisions of the Patents Act, 1970 which protect the interests of the patentee. It’s surprising that Indian discussions on patents rarely discuss those aspects of the law which provide succour to the patentee.
One provision whose complete import, in my humble opinion, has not been fully explored is Section 13(4) of the Patents Act.
Section 13 of the Patents Act deals with the investigation that a patent examiner is expected to undertake to check for anticipation of a patent application by prior publication or prior claim.
After enumerating the literature, patent and non-patent, that the examiner may review to assess the novelty of the invention claimed in an application, Section 13, in sub-section (4) states that the examination and investigation required under Sections 12 and 13 of the Act shall not warrant the validity of the patent.
Section 13(4) further states that no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any examination or investigation or any report or other consequent proceedings.
This provision i.e.Section 13(4) has been commonly and rightly interpreted as denying any kind of presumptive validity to a patent granted under the Act. But I think there is more to the provision than merely denying presumptive validity...
Besides denying presumptive validity and shielding examiners from liability of any kind, Section 13(4) also ensures that the patentee does not suffer or is not penalised or held responsible for any act of commission or omission by the examiner during the examination of the application.
In other words, my point is that if the Act requires the examiner to perform a certain task or duty, which the examiner fails to perform, the validity of the patent shall not be impugned on grounds that the examiner did not perform such duty.
Simply put, the patentee shall not be denied a remedy citing an oversight or dereliction on the part of the examiner.
What is the basis for such a proposition? First, this is logical because if the patentee or the applicant for a patent has fulfilled all his obligations under the Act, he must not pay the price for an act of neglect by the examiner.
Not just that, if the legislature indeed wanted the patentee to take the rap on his knuckles for oversight or neglect on the part of the examiner, then Section 64 of the Act, which lists grounds of revocation, would have provided for an additional ground such as dereliction of duty or non-performance of mandatory tasks by the examiner.
None of the grounds for revocation provided in Section 64 permit assailing the validity of a patent on grounds of improper examination or incomplete search or improper preparation of reports by the examiner.
This is further supported by the fact that both the IPAB or the High Court, which have the authority to entertain a petition or a counterclaim for revocation of a patent under Section 64, are vested with original powers to test the validity of the patent on substantive grounds, not administrative ones.
Stated otherwise, the scope of enquiry of the IPAB or the High Court is restricted to testing the validity of the patent solely on grounds detailed in Section 64, and no other. The very reason the IPAB and the High Court are vested with original powers is so that they may step into the shoes of the examiner as well as the arbiter of the law, and verify for themselves if the invention claimed indeed deserved the patent.
To capture the post in a nutshell, the effect of Section 13(4) is three-fold:
1. The patentee cannot claim to enjoy any presumptive validity merely on account of grant of the patent after due examination;
2. The examiner shall not be exposed to liability of any kind for any act or omission performed in the course of his duty; and
3. The grant of the patent shall not be assailed citing non-performance of any obligation by the examiner. The patent’s validity may be challenged only and only on grounds mentioned in Section 64.
I am sure there are principles of administrative law, which support this interpretation. I’ll try and bring them to the attention of our readers in the next few days. Until then, corrections, opinions and assistance with case-laws are welcome!