Wednesday, July 25, 2012

Snippet: IPO’s Public Notice on Amendment of PCT NP applications Challenged

On July 18 2012, I filed a PIL W.P.(C) 4427 of 2012, J.Sai Deepak v. Union of India, challenging the Public Notice issued by the Indian Patent Office prohibiting amendment of National Phase PCT applications before they enter the National Phase. The said PIL was listed before the Chief Justice of the High Court of Delhi today. My submissions on the maintainability of the PIL were heard and notice was issued to the DIPP (since the IPO falls under the DIPP) to respond to the PIL. The next date before the Court is August 29, 2012.


  1. Will eagerly await for more details...can you also try and interpret Article 41 PCT and Section 10(4)(a)of Patents Act, 1970 for me in this context? I understand that these provisions do not bar an applicant to amend his application at the time of national phase entry. I base this on the following: the intent of the PCT is not to create undue burden on the applicant, but to simplify the filing process across various member countries. Only yesterday i filed an NP application at the IPO where the applicant having discovered an error in the priority details, requested us to file with the corrected details giving documentary support. Since there was no request filed at the IB leading to an IB/306, we had no choice but to file the application with a "wrong priority". Now what kind of law would encourage THAT???

  2. Dear Deepa,
    I completely agree with you. In fact, in the PIL I have interpreted Sections 3, 7(1A), 10(4A) and 138(4A) along with Rule 20 of the Patents Rules, 2003 and Article 28 of the PCT. I will put up relevant excerpts of my PIL soon.

    Best Regards,