Can the Controller of Patents Review a Patent Grant Under Section 77?

Section 77 of the Patents Act, 1970 lists the powers of a civil court that are vested in the Controller of patents, whose exercise is subject to the Patents Rules, 2003. These powers may be exercised in “any proceedings” before the Controller.

Although what constitutes a “proceeding” is not defined, the use of “any” indicates the broad scope of the provision. In other words, the exercise of these powers is not limited to pre and post-grant oppositions. Therefore, it could be said that these powers are available even in the examination and grant of a patent.

Under Section 77(1)(f), is it possible for the Controller to review a typical patent grant? There is no limitation in the wording of the provision which precludes the exercise of power of review in relation to an order of patent grant. After all, the grant of a patent is a decision passed under Section 43 of the Act, and Section 77(1)(f) deals with review of the Controller’s “decision”, which includes the decision to grant a patent.

That said, the power cannot be exercised suo motu since the provision expressly calls for an application to be made in the prescribed format within the prescribed time, both of which are provided for in Rule 130 (Form 24).

“Innocent Infringement” under the Trademarks Act, 1999

Last week I was asked if “innocent infringement” is a defense that is recognized under our Trademarks Act, 1999. This was a question I had never had the occasion to deal with, so I looked up the Act. Section 135(3) of the Act does provide for innocent infringement as a limited defense to the extent that it stipulates that a Court shall not grant relief by way of damages (other than nominal damages) or an account of profits in the following situations:

1.       Where the mark asserted is a certification trademark or collective mark;

2.       Where the defendant in a suit is able to prove his ignorance of the trademark registration or the Plaintiff’s status as a registered user;

3.       Where the defendant ceased to use the mark without any delay as soon as he was apprised of the registration.

Defenses 2 and 3 are available even in passing off actions, which the provision expressly provides for. Clearly the provision does not (and logically cannot) preclude grant of injunctive relief. However, while punitive damages cannot be awarded to the plaintiff owing to this provision, what does “nominal damages” translate to? Since the term used is “nominal damages”, it is not in the nature of costs.

Are there any tests laid down to determine what would amount to a slap on the wrist, instead of a rap on the knuckles? I welcome the opinion of our readers on the issue.