In the last two posts, I had written about the consequences under Section 21 of the Patents Act in not responding to a pre-grant opposition within the prescribed time period. In this post, the idea is to take a concise re-look at the framework of the pre-grant mechanism, the scope of Sections 21 and 14.
Let me first address the scope of Section 14. Here's the provision:
14. Consideration of the report of examiner by Controller: Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.
The underscored portions of the Section are relevant to the issue at hand. A hearing under Section 14 applies only with respect to an adverse examination report, not to a pre-grant opposition.
It also needs to be pointed out that a hearing under Section 14, even with respect to an adverse examination report, cannot be granted beyond the 12 month period mentioned in Rule 24B(4). I had said this about three years ago elsewhere. This is because, contrary to what was incorrectly held in Ferid Allani v. Union of India, the 12 month period under Rule 24B(4) is non-extendable, which is abundantly clear from Rule 138.
Coming back to the issue of pre-grant opposition, Section 14 is not an omnibus hearing provision which can invoked at every instance. Rule 129 of the Patents Rules is an omnibus hearing provision, which too can be invoked only if it does not interfere with the deemed abandonment under Section 21.
The other reason why Section 14 does not apply to a pre-grant opposition is because Rule 55(6), subject to Rule 55(4), takes care of the hearing requirement with respect to a pre-grant opposition. Therefore, Section 14 is irrelevant in so far as a pre-grant opposition is concerned.
The sum and substance of this is, Section 14 cannot come to the rescue of a patent applicant who has failed to respond within the non-extendable 3 month period to a pre-grant opposition.
It also appears that a few of us seem to be of the view that Rule 24B and the non-extendable time period of 12 months prescribed therein, apply to a pre-grant opposition. This is again erroneous because Rule 55 is self-sufficient with respect to the time period available to a patentee to respond to a pre-grant opposition. Therefore, the only applicable time-period to respond to a pre-grant is the 3 month period provided under Rule 55.
One of the reasons a few people apply the rules and timelines of examination to the pre-grant opposition is because they assume that pre-grant opposition falls with the definition of examination under Section 12. Such assumption is incorrect because a pre-grant opposition under Section 25(1) is a stand-alone mechanism which aids examination, but is not technically a part of examination under Section 12.
As regards my contention that abandonment under Section 21 is the inevitable consequence of not responding to a pre-grant opposition, I wish to reiterate that a pre-grant opposition notice under the Act is not a mechanical one. As I said in the earlier post, it is issued, or at least presumed to be issued, only after application of mind by the Controller who believes that the pre-grant representation deserves his consideration and also merits response from the patent applicant.
Therefore, if the patent applicant fails to respond within 3 months to this considered notice of pre-grant opposition issued by the Controller, there is no reason to believe that he is still interested in pursuing the patent application. It is precisely to address such situations that Section 21 exists. To restate what I said in the earlier post, Section 21 does not limit itself solely to issuance of and response to examination reports. It applies to all necessary steps that a patent applicant must take within the applicable prescribed time period to evince his seriousness in keeping the application alive, failing which deemed abandonment follows automatically.
Importantly, if office practice does not respect the inviolability of Section 21, it does not mean that office practice is correct or that the timelines prescribed in the Act and the Rules are not mandatory. It only means that office practice is wrong, there is no other way of saying this.
Comments and Corrections are welcome!