Tuesday, December 27, 2011

A Strange Case of Errors

Why don’t patent offices issue examination reports well in time bearing in mind that the applicant may need time to think and respond?? Here’s a case which is not very uncommon and I am sure quite a few applicants might even relate to:

1. FER was issued in a patent application on November 15, 2007, which was returned by the original agents on record stating that the case had been transferred to another agent.

2. In March 2008, a change of address application was filed by the newly appointed agent.

3. The FER was re-issued only on October 20, 2008, i.e. just a month before the expiry of the 12-month period for putting the application in order for grant. Of course, the FER did clearly mention that the response had to be submitted on or before November 15, 2008.

4. The response to the FER was submitted by the newly appointed agent only in March 2009 (why? Did the agent expect the delay to be condoned? But then, there is no condonation possible for timelines mentioned in Rule 24B under Rule 138).

5. A hearing was held, upon request by the agents, on October 12, 2009, in which the application was finally deemed as abandoned.

A few questions that are on the top of my mind are as follows:

A. Why did it take 7 months for the Patent Office to re-issue the FER to the new agent after the change of address was submitted? At the end of the day, the applicant has suffered largely owing to the delay in re-issuance of FER.

B. How can a hearing be sought under Section 21? How did the Patent Office grant a hearing in a matter where deemed abandonment under Section 21 had already taken effect?

The short question is, does the patent office have the power to grant hearings in situations strictly covered by “automatic” provisions such as Section 21? It is obvious that there is no room for exercise of discretion under Section 21(1), unless the case falls under Section 21(3).

Simply put, the effect of deemed abandonment is set in motion the moment the 12-month period expires, with absolutely no room for interference either by the applicant or the patent office. Then, how and why was the hearing granted in this case? Although, this situation would not have arisen had the FER been issued well in time to the new agent. 

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