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.

PRAYER

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

                                                                                                                                                                                                    Petitioner

Excerpts from the PIL against Public Notice on PCT NP Applications- I

15.   With specific regard to amendment of national phase patent applications, which is the subject-matter of the instant Petition, the relevant provision of the PCT which is to be referred to is Article 28. The said provision of the PCT reads as follows:

Article 28: Amendment of the Claims, the Description, and the Drawings, before Designated Offices

(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.

(2) The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the designated State permits them to go beyond the said disclosure.

(3) The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.

(4) Where the designated Office requires a translation of the international application, the amendments shall be in the language of the translation.

16.    Sub-articles 1, 2 and 3 of Article 28 are of immediate relevance to the Petition. As regards the extent of amendment permitted in the National Phase patent applications, the caveat spelt out in sub-article 2 applies. According to sub-article 2, no amendment of the national phase application shall go beyond the scope of disclosure in the International application as originally filed, unless otherwise provided for under national laws. The corresponding provisions of the Indian Patents Act which must be referred to in order to understand the extent of amendment permitted under Indian law are Sections 10(4A) and 138(4A). Both provisions abundantly clarify that for the purposes of the Act, the international application filed before the WIPO in the International Phase shall be treated as a “complete specification”. This means that the scope of amendments carried out in the National Phase patent application cannot go beyond the subject-matter disclosed in the International Application. Simply put, according to the Act, an applicant may not claim more than what he did in the International Phase.

17.    On the issue of timing of the amendment, sub-article 1 clarifies that national patent offices must afford the applicant an opportunity to amend the patent specification to bring it in conformity with national laws. Reading sub-articles 1 and 3 together, it becomes clear that the “prescribed time limit” in the provision refers to the time limit for amendment of specification prescribed by national patent laws for applications under the PCT Route. It is critically submitted that there exists no such prescribed time limit under any specific provision, Section or Rule, of the Indian Patents Act for amendment of National Phase PCT applications. Even Rule 20 of Patents Rules, 2003, which deals with PCT applications, makes no mention of any specific time period for amendment of applications. More importantly, there is no provision which requires or stipulates that amendment of a patent specification in the PCT route may be carried out only after the filing of the National Phase PCT Application. In other words, the Respondent does not have the power to issue any directive or Notice which does not have any statutory basis. It is humbly submitted that surprisingly nowhere in the Impugned Notice is there a reference to the provisions of the Act or the PCT upon which the Notice is based. This further corroborates the Petitioner’s stance that the Impugned Notice has no basis in the Act. A directive or a Notice may be issued only if it is based on or supported by a provision of the Act. Therefore, in the absence of any express provision spelling out the time limit for amendment of National Phase PCT applications, the Impugned Notice of the Respondent lacks statutory basis, and is hence arbitrary.

18.   Further, it is submitted that there is nothing in the Act which forbids or bars filing of already amended National Phase patent applications. As stated with respect to the Convention route, the point which is of critical relevance to the PIL is that after the filing of the International Application under the PCT Route and until the filing of a National Phase patent application in India under the Act, it is the applicant’s sole prerogative to fashion the contents of his Indian application in accordance with his objectives, bearing in mind the conditions for retaining the priority date of the basic application and substantive patentability requirements of the Indian Patents Act. Critically, there can be no interference or intrusion with or into this prerogative of the applicant. With specific reference to the Indian Act, until a corresponding National Phase Patent application is filed as required under Section 7(1A) of the Act read with Rule 20 of the Rules, the Indian Patent Office does not have the power to influence the contents of a prospective Indian application. Only after the application is filed, the Indian Patent Office assumes the right to direct the applicant to amend the application to satisfy the requirements of the Act.

19.  Further, Section 7(1A) read with Rule 20 refers to a “corresponding application”, but does not even remotely allude to or suggest or state an “identical” application. It must also be understood that Section 3 of the Act which enumerates “What Are Not Inventions” plays a pivotal role in the construction of a patent document since every patent applicant has to steer clear of the proscriptions of this Section. If the Impugned Notice of the Respondent were to be correctly understood, the true import of the Notice is that, according to the Respondent, unlike other applicants, an applicant under the PCT Route does not have the prior right to amend the contents of his International Application in order for it overcome the cardinal subject-matter eligibility barriers spelt out in Section 3. This proposition is not only lacking in statutory support, but also is fundamentally erroneous. This is because every patent applicant, prior to the filing of an application for a patent under the Act, has the sacrosanct right to draft his patent application in a way he chooses to, bearing in mind the requirements and preclusions of the Act. This right is available to every applicant, regardless of the route he chooses to employ for filing the Indian patent application. It is critically submitted that no Convention or Treaty permits or envisages unequal treatment of patent applicants merely because they choose to employ a certain mechanism to file their applications. The Impugned Notice has the unjustified effect of curtailing this sacrosanct prerogative of applicants under the PCT route, thereby employing different standards to these applicants.

20.    It is further submitted that as part of the National Phase Patent Application, the applicant, akin to other patent applicants, has to submit Form 1 under the Act which, inter alia, requires the applicant to declare that “there is no lawful ground of objection to the grant of the patent” to him. The Impugned Notice renders this declaration useless by requiring the PCT applicant to file the un-amended application knowing fully well that some of his patent claims are clearly hit by lawful objections under Section 3 of the Act. This has a graver consequence for the applicant and for the public at large. Section 64(1)(j) of the Act provides for a ground of revocation of a patent if the patent was obtained on a false suggestion or representation. If a PCT applicant were to comply with the directions of the Impugned Notice, he would be forced to make a false representation to the Indian Patent Office. This proves that the Impugned Notice is not only baseless, but is also unlawful. On the other hand, if the Patent Office were to let through the unpatentable content without carefully examining it and grants a patent, it could potentially hurt public interest because it would end up handing the patentee a monopoly which he ought not to have been granted in the first place. Therefore, besides being unlawful the Impugned Notice could hurt members of the public.

21.    It is also submitted that if the Impugned Notice were allowed to remain in force, the consequence would be that an applicant would end up filing a specification which he knows contains unpatentable content under Indian law, only to be subsequently objected to by the Indian Patent Office. This objection would form part of the First Examination Report (FER) issued by the Patent Office under Rule 24B of the Patent Rules, 2003. This would further contribute to protracting the process of examination and grant of the patent, which in India is already way beyond the stipulated time frame under the Act. This would also add to the applicant’s costs. The only other alternative would be for an applicant to file an application for amendment immediately after the filing of the National Phase application under Section 7(1A). This is precisely the directive issued by the Respondent. Besides this alternative having no statutory support and contravening the statute, the Respondent’s insistence on amending the contents of the National Phase applications only after the filing of the applications has the effect, intended or otherwise, of unjustifiedly adding to the costs of the applicants thereby contributing to increased revenues of the Indian Patent Office, besides prolonging the process of grant. It is humbly submitted that the Indian Patent Office is one of the most cash-rich wings of the Government. The Impugned Notice would only end up adding to the coffers of an already self-sufficient entity, without adding to the efficiency of the patent filing or examination process in any manner.