Friday, August 3, 2012

Excerpts from the PIL against Notice on PCT NP Applications- II

22.   Arguments on unconstitutionality: It is humbly stated that even Indian applicants may and regularly choose to employ the PCT Route since the PCT route gives them a preliminary opinion on the patentability of their invention. The Impugned Notice has the consequence of applying different norms for Indian applicants under the PCT Route and regular Indian applicants, with there being no intelligible reason being proffered by the Respondent to support this differential treatment. In other words, the mere fact that an applicant chooses to file under the PCT Route is not sufficient enough a reason to apply different standards in the absence of a statutory provision which envisages such treatment. Therefore, the Impugned Notice violates Article 14 of the Constitution since there is unreasonable differentiation among Indian applicants.
23.   Arguments on Public Interest: It is humbly submitted that one of the reasons that the Respondent has issued the Impugned Notice with respect to national phase PCT applications is that, in quite a few instances in the Indian Patent Office relating to National Phase PCT applications, the Indian Patent Office does not conduct a search and examination of its own; instead, it relies upon the results of the International Search Report (ISR) and International Preliminary Report on Patentability (IPRP) issued in the International Phase of the PCT Route. This is contrary to the mandatory duties of search and examination stipulated under the Act under Section 12 of the Act, which apply to all patent applications filed before the Patent Office, regardless of the route through which they are filed. Section 12 of the Act is reproduced hereinbelow:
"12. Examination of application: (1) When a request for examination has been made in respect of an application or a patent in the prescribed manner under sub-section (1) or sub-section (3) of Section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely:
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under Section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed."
24.   Nowhere does Section 12 carve out exceptions for National Phase PCT applications with respect to search and examination. The very purpose of these provisions is that the Indian Patent Office must apply Indian law and standards of patentability to applications filed before it, regardless of the observations in the ISR and the IPRP. Since the PCT itself states that the ISR and IPRP are non-binding opinions, it makes it incumbent on the Indian Patent Office to thoroughly perform its duties under Section 12 since this provision represents the first line of defense to protect public interest from grant of unwarranted and frivolous patents. Through the Impugned Notice, the Indian Patent Office seeks to ensure that the contents of the Indian National Phase Application are same as that of the International Application so that the results of the ISR and the IPRP can be accepted in toto without any search or examination being undertaken under Section 12 of the Act. In a way, the Impugned Notice facilitates non-performance of mandatory duties of search and examination which puts public interest in grave peril because patent rights are not mere private rights, but have a concrete public interest angle to them.
25.    As submitted earlier, under the framework of the Act and as rightly laid down by a Division Bench of this Hon’ble High Court in Franz Xaver Huemer v. New Yash Engineers (AIR 1997 Del 79), a granted patent may be challenged only under the grounds enumerated in Section 64 of the Act, none of which pertain to non-performance of mandatory duties by the Indian Patent Office. In short, under the law, a patent cannot be revoked nor its validity be challenged on grounds of improper or non-examination of the patent by the Indian Patent Office. In light of this, it becomes all the more imperative to ensure that the Indian Patent Office performs its mandatory duties since opaqueness in grant of a patent has a tangible adverse effect on public interest. Consequently, the Impugned Notice must be quashed since it renders secondary the public interest aspect of the quid pro quo equation which patent rights represent. The instant PIL is an attempt to protect such public interest since there are no recourses available under the Act post the grant of the patent to challenge it on procedural or administrative grounds.
26.   Annexed herewith as Annexure B is Appendix C from the annual report of the Indian Patent Office for the year 2009-10. The said Appendix captures the number of patent applications filed in the last 10 years before the Indian Patent Office. Out of the 34, 287 patent applications filed before the Indian Patent Office in 2009-10, close to 23,431 applications are National Phase PCT applications. In short, they constitute close to 68.37% of the total number of patent applications filed before the Indian Patent Office in 2009-10. The Appendix reveals that this proportion has remained more or less the same over the last 10 years. If the Patent Office chooses to rely on the findings in the ISR and the IPRP in such a huge chunk of patent applications, without undertaking search and examination of its own, the adverse consequences on Indian public interest can only be imagined. Consequently, it is imperative that the Impugned Notice be quashed and guidelines be issued by this Hon’ble Court in accordance with Section 12 of the Patents Act, 1970 and Patent Rules, 2003 on search and examination of patents by the Indian Patent Office. It is submitted that such guidelines are necessary for two reasons. First, the public at large must not suffer due to grant of patents which claim unpatentable subject-matter and which have been let through due to non-adherence to the framework of the Act. Second, genuine patentees must not suffer due to improper examination of their applications despite having fulfilled all their statutory obligations. Therefore, it is humbly prayed that besides quashing the Impugned Notice, this Hon’ble Court also issues guidelines for search and examination in accordance with the Act.

28.         In light of the above, it is humbly prayed that this Hon’ble Court be pleased to:
(a)         Declare that PCT applicants have the right to amend the contents of their specification before they file a National Phase PCT application under the Patents Act, 1970; and consequently
(b)         Quash the Impugned Notice No. CG/Public Notice/PO/2012/15 dated July 2, 2012 issued by Controller General of Patents, Designs and Trademarks as being unconstitutional to the extent it goes against Prayer (a);
(c)          Issue guidelines on search and examination of patent applications in accordance with Section 12 of the Patents Act, 1970 and the corresponding Rules under Patent Rules, 2003;
(d)         In the interim, stay the Impugned Notice to the extent it goes against Prayer (a) until the disposal of the instant Petition;
Such other orders as the court may deem fit in the interest of justice.
It is prayed accordingly.
J.Sai Deepak

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