Saturday, September 3, 2011

Lesson for Applicants: No Room for Internal Docketing Errors

Deadlines are of the essence in patents, and I think patent prosecutors understand this better than anyone else (I wouldn’t call myself a patent prosecutor, I am a litigator). 

To avoid human error, most prosecuting firms and in-house IP teams have softwares to remind them of the deadlines, but there is still room for error when entries are made.

A decision of the Delhi Patent Office delivered in a hearing dated July 26, 2011 in connection with the application 5043/DELNP/2011 drives this point home better. The facts of the case in brief are as follows:

1. The application in question was a national phase PCT application filed by Durect Corporation, which claimed priorities from two US applications, the first of which was dated November 3, 2006 and the second was dated June 22, 2007.
2. The national phase application was recieved by the Indian Patent Office on February 8, 2010.
3. The application was returned by the patent office on grounds that the national phase application was filed beyond the stipulated period of 31 months from the date of priority.
4. Durect corp filed a writ petition in which the Delhi High Court directed the Patent Office to consider the patent application of Durect along with its petition under Rules 137 of the Patent Rules for condonation of irregularity.

Accordingly, a hearing was held by the Delhi Patent Office. Durect Corp attributed the delay in filing the national phase application to an error in the internal docket records of the company, wherein the later priority date of June 22, 2007 was entered and treated as the reference date to calculate the 31 month period for national phase entry.

The question before the Delhi Patent Office was if this delay could be condoned under a combined reading of Sections 80 and 81 and Rules 137 and 138.

It was submitted by Durect that docketing error has to be considered as sufficient cause for delay according to the PCT, and Rule 82bis was specifically cited to support this submission. Besides, Section 5 of the Indian Limitation Act too was marshalled to buttress Durect’s case.

In a surprisingly well-researched decision, the Patent Office rejected all the above submissions for the following reasons:
1. The PCT requires national law to provide for mailing delays, which Indian law duly provides for under Rule 7 of the Patent Rules. Docketing errors may or may not be permitted and this is left to the discretion of member nations of the PCT. Indian law does not recognize internal docketing errors as valid reason.
2. Not just that, even the PCT, at best, recognizes a two-month delay in case of docketing errors. In this case, the delay was 8 months
3. Rule 137 is to be employed by the Controller to condone procedural foibles such as filing of the wrong document or application, so long as a third party’s interest is not affected. However, this Rule did not have the potency to cure delayed national phase entry.
4. For Rule 138 to apply, extension must be sought within the stipulated period, which is 31 months in this case, and at best a month’s extension could have been granted, but not an 8-month extension.

Although it is unfortunate that the decision went against Durect, I think this case is a standing example for applicants to ensure that they take utmost care even when entering details in their internal docket management systems.

That aside, this decision, considering the detailed analysis of provisions undertaken by the Patent Office, is a welcome development and is hopefully a sign of better things to come.

Thanks are due to Sandeep Kanak Rathod for bringing this decision to my attention.

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