Prescribed Period for Request for Examination: Delhi High Court Gives an Unwarranted Twist

In a decision that was brought to my attention by my co-blogger Divya, the Delhi High Court may have erred on the prescribed period for filing request for examination of an application.

In a writ petition filed by a patent applicant, Mr. Carlos Alberto Perez Lafuente, the Delhi High Court was required to deliberate on the combined interpretation of Rules 24B(1)(i) and 24B(1)(iii) of the Patents Rules. Following is the Rule:

24B Examination of application: (1)(i) A request for examination under Section 11B shall be made in Form 18 (within forty eight months) from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

What do we observe from Sub-rules (i) and (iii)?

A. Sub-rule (i) refers to Section 11B as a whole, whereas Sub-rule (iii) refers to Section 11B(iv)

B. Sub-rule (iii) refers to secrecy directions, which is absent in Sub-rule (i).

C. Sub-rule (i) uses “whichever is earlier”, whereas Sub-rule (iii) uses “whichever is later”

The question before the High Court was, since Sub-rule (i) refers to Section 11B as a whole whereas Sub-rule (iii) refers to Section 11B(iv), is an applicant governed by “whichever is earlier” or “whichever is later”? I could be wrong, but I think the answer is fairly straight-forward since the reference in Sub-rule (iii) is to applications in respect of which secrecy directions have been issued.

Let’s read Section 11B(4) to verify this:

(4)   In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant:

Provided that -

(i) the applicant may, at any time after filing the application but  before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under  section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

Sub-clause (i) of the proviso to Sub-section (4) of Section 11B refers to the consequence of delayed filing of a request for examination, along with an option for the applicant to withdraw his application any time before grant.

In contrast, Sub-clause (ii) of the Proviso refers to the prescribed period for an application in respect of which secrecy directions have been issued. When this Sub-clause is read with Rule 24B(1)(iii), there is no doubt that the Rule applies to an application in which secrecy directions have been issued. In other words, the “whichever is later” rule applies only to applications in which secrecy directions have been issued.

Surprisingly, the Delhi High Court held to the contrary and observed that there is a confusion as to the application of Rules 24B(1)(i) and (iii). It further went on to support the applicant’s contention that WIPO guidelines prevail in the case of a conflict between the Act and WIPO guidelines, since the Guidelines qualify as administrative instructions within the meaning of Rule 23 of the Act.

I don’t think there was any need to refer to Rule 23 at all the in the first place in the case, because there is no ambiguity or conflict in Rule 24B(1)(i) and (iii).

Opinions and corrections are welcome!