Friday, March 29, 2013

Busting the Perceived Sanctity of “Office Practice”

In my last post, I had taken the view that the consequence of the patent applicant not responding to the notice of pre-grant opposition issued by the Controller within the non-extendable 3 month period under Rule 55(4) leads to deemed abandonment of the patent application within the meaning of Section 21 of the Patents Act. 

The comments received to the post give me the impression that "office practice" has a vice-like grip on the practice of the subject. A large part of what patent practitioners understand and practice, in particular patent agents and non-litigating patent practitioners, is influenced by office practice and practical exigencies of dealing with a particular patent application. This is justifiably so because judicial guidance on the minutiae of office practice is precious little, and until the time applications present more opportunities to address practices which we take for granted, it may not make sense for practitioners to go against the tide of “office practice”.

Further, for prosecuting patent attorneys the primary objective is to deliver results to the client, and set the law in the process, not the other way round. After all, the client doesn’t pay the attorney to set the law unless the law helps further the client’s case. Therefore, I don’t wish to commit the oft-committed sin of pontificating to experienced practitioners as to how they ought to go about their practice.

May be it is fashionable for a few to bear a superior prejudice and constantly berate Indian patent practitioners without ever having practiced the subject or with negligible experience with any form of patent practice. I don’t approve of this tendency because sanctimony hasn’t ever helped change a situation, instead it only contributes to alienating an audience with whom it is absolutely imperative to engage if we wish to have a constructive discourse aimed at changing the system for the better.  

My sole intention is to drive home the point that although it might help in the short term to conform to office practice to get the job done, it is important to rigorously test office practice on the anvils of statutory interpretation so that we know what is the most plausible position of the law that a Court might take if presented with an issue. At least this way, we know what is in store if office practice were to be under the Court’s lens, and accordingly have a Plan B in place.

Simply put, it does not help to delude ourselves into believing that office practice is the law or that it represents the true position of the law. We must not let office practice affect our judgment to such an extent that we become incapable of objectively analyzing the legality of an action based strictly on established canons of statutory interpretation.

It would probably help if patent agents, who primarily handle drafting and prosecution, interact as frequently as possible with patent litigators so that the drafter is on the same page as the litigator. This way consistency in arguments can be maintained from the stage of prosecution to litigation.

I sincerely hope that these suggestions are received in the right spirit.


  1. It appears that this post assumes a copy book case of examination and time lines to respond. It would be interesting to see what would happen once there is a deviation. For this, lets say that a patent applicant receives N number of examination reports from patent office and accordingly the applicant files N number of responses within the statutory period of 1 year starting from the date of first examination report. On expiry of 1 year, a hearing is called or sought by the applicant so as to dispose of the application either in a grant, refusal or amendment. Now, in the hearing (which takes place beyond the statutory period of 1 year from the date of FER), the patent application appears to stand and comply with all the requirements under the act and establishes a case for notification of grant following the hearing. During this period, when the applicant has complied with all the requirement that too within the prescribed period of 1 year( as prescribed in Rule 24 B(4)) and the application awaits to be notified as grant, a pre-grant representation is filed. Given the elapse of statutory period of 1 year from the date of FER, does this per-grant representation (plus section 21) still operate to preclude a grant for the application if the applicant avoids to file response to the pre-grant opposition?
    It would be interesting to see the importance of the time line as prescribed in Rule 24B(4) as pre-grant opposition can have date beyond the 1 year window of compliance but before grant.



    1. Dear TS,
      Thanks for the comment. I am fairly familiar with the actual practice of the patent office when it comes to issuance of FERs, so my opinions are not that of an arm-chair critic :-)In fact, in December 2009, I had addressed the very question you pose in the post below:

      Below was my opinion on the issue:
      "It appears that there is something else interesting as well; under Section 14 of the Act, if the examination report is adverse to the applicant, then before the disposal of the application, the applicant may make a representation for a hearing.

      It must be noted that the representation must be made within the prescribed period, which is 12 months under Rule 24B. So typically these days most practitioners forward such a representation along with their response to the examiner's report.

      Turns out that, not infrequently, the patent office gives a date of hearing which is after the prescribed 12 month period. Is this permissible is the question. Can there be a hearing under Section 14 after the prescribed period?

      Some may say that Section 14 stipulates a time period for the applicant to make his representation, but does not give a timeline for the hearing by the patent office and so the patent office is justified in giving a date after the 12 month period.

      My answer is, Section 14 need not set a timeline for the patent office because it is already provided for in Section 21.

      A plain reading of Section 21 tells us that the 12 month period is to be observed strictly and the only instances where it may be extended are spelt out under sub-section 2 and 3. Sub-Section 2 provides that, at the end of the 12 month period if there is a pending appeal of the applicant filed before the High Court, then the 12 month period may be extended to a date that the High Court may determine.

      Sub-section 3 of Section 21 and its proviso read thus:

      If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine:

      Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court

      Does this sub-section refer to an extension given by the Controller to file the appeal spoken of under sub-section (2) or, does it generally refer to an extension from the 12 month period in case the applicant has not been able to file his response to the report? Since the sub-section refers to the time period within which the appeal may be instituted, it means the former.

      For instance, if the time period for filing an appeal referred to in sub-section (2) starts just before the end of the 12 month period, then the applicant would naturally need an extension of the 12 month period so that he may file such an appeal, without having to worry about a deemed abandonment of his patent application under Section 21. However, sub-section (3) does not state if this is to be only at the representation by the applicant or suo motu.

      If this be the case, it could be said that unless there is an extension of the 12 month period under sub-sections 2 or 3 of Section 21, the hearing under Section 14 too must be held only within the 12 month period.

      The bottom line is that Section 21 applies with equal rigour to the applicant and the patent office. So no act of the patent office should have the effect of derogating from the period prescribed in Section 21."

    2. CONTINUED from the last comment:

      As regards the issue of filing of pre-grant opposition, the clear answer is that the 12 month requirement under Rule 24B(4) is not a bar on filing the pre-grant opposition beyond the 12 month period from the time FER is issued. Since Section 25(1) clearly states that a pre-grant opp may be filed until the grant of the patent, it is permissible to entertain a pre-grant in the interregnum between the hearing and the notification of grant.

      From this, it also flows that the 12 month period applies only with respect to examination reports issued by the Patent office, and not to the filing of a reply to the pre-grant opposition. The pre-grant opposition, in light of Rule 55(3), triggers another set of timelines, independent of Rule 24B. This is exactly what I had said in my last post on the nexus between pre-grant opposition and Section 21. Please read this post to understand my point better-

      In other words, the 12 month bar will not apply to the patent applicant's right to file a reply to the pre-grant opp, and consequently the application cannot be deemed as abandoned, unless of course the patent applicant fails to reply to the pre-grant opp within 3 months from the date of notice.

      I hope this answers your query.

      Best Regards,

  2. Dear Mr. TS,

    I think you have envisaged correctly a situation which Sai Deepak Sir intended to highlight in one of his comments to Mr. Anon in the previous post (of mandatory reply). It is true that there may be a pre-grant opposition during the order of grant order is being processed and in such case the ‘practice’ of countering the opposition in the reply to examination report would be futile.

    But also, this situation may arise when one goes by the ‘experience’ of the Patent Office’s ‘practice’ wherein after the order of grant is made, there exists a gap, after only which the application is published as patent (under Section 43(2)).

    But what if the ‘practice’ of patent office runs at the whims and fancies of the officers therein and say, deviations occur from usual practice (may or may not for favoring someone). For example, as far as my understanding goes, once a pre-grant opposition is rejected by the controller, and the Applicant’s reply to examination report has been also deemed satisfactory, there generally exists a window of few days, before publishing the patent as granted, which may be used by the Opponent and he/she may chose to file an appeal against the adverse order of controller (of rejection of pre-grant opposition).

    The deviation of this practice has occurred in atleast few instances I am aware of when the Patent was published within just two days (yes, it is unimaginably fast for IPO) of the order of rejection of pre-grant opposition. I shall be glad to inform you about atleast one of the cases, but not here, may be offline.

    The supposedly short term practices of IPO indeed do not represent the statutory position of law, but somehow, looking at the everlasting term of ‘short term practices’ and the hierarchy and grievance redressal mechanisms that are working in there, only thing that comes to my mind is the ultimate question of ‘who shall guard the guardians?’

    @Sai Deepak Sir, if I may ask here, probably off the topic of discourse, but is there any rule/section which guides the number of pre-grant oppositions which can be filed by an individual/party/organization against a patent application?


    1. Dear Prashant,
      To the best of my knowledge, I dont think there is any rule or section which sets a limit on the number of pre-grant oppositions except the general principle pf res judicata and its exceptions. Here's a post I wrote on the issue: