Delhi High Court Dismisses Writ Petition by AIDS NGO Seeking Directions against Abuse of Divisional Patent Applications

In a crisp judgment dated May 7, 2015, the Chief Justice of the Delhi High Court dismissed a writ petition filed by a Delhi-based HIV/AIDS NGO, The Delhi Network of Positive People, in which directions were sought to amend the procedure under Patents Act, 1970 to prevent abuse of the process of filing divisional patent applications by patent applicants.

As our readers are aware, Section 16 of the Patents Act, 1970 permits filing a divisional patent application either suo motu by the applicant or in response to an objection raised or direction issued by the Patent Office, only when the basic patent application discloses multiple inventive concepts which are not cognate. The Petition (rightly) raises the issue of abuse of the process of suo motu filing of divisional patent applications by applicants who anticipate rejection of their patent applications, in the hope that they might get lucky the second time around, even when they are fully aware that they do not satisfy the requirement of Section 16 (this issue was dealt with in a post I wrote four years ago elsewhere).

To remedy the mischief, the Petitioner prayed for directions to the Ministry of Commerce requiring it to amend Form 1 of the Patents Act so as to include an undertaking by the patent applicant at the time of filing of a divisional application that the parent application discloses multiple inventions not constituting one single inventive concept and that the claims of the divisional application are not identical to those of the parent application. A second direction was sought which required the Controller of patents to take an ex parte decision on the maintainability of a divisional application before examining it for patentability. Finally, a provision for action against mischievous patent applicants was sought.

Although the Court recognized the validity of the concerns raised in the petition, it was dismissed on grounds that a Court could neither legislate nor issue a direction to the Legislature to enact in a particular manner. Further, in the absence of a constitutional challenge to the legislation, it would be equally impermissible for a Court to expand the scope of the legislation or recast it through interpretation. In this regard, reliance was placed on the Supreme Court’s decision in V.K. Naswa v. Home Secretary, Union of India (2012) 2 SCC 542. The High Court also observed that it could not direct the Controller of Patents to exercise his power in a manner contrary to the framework of the Act.

The other reason for dismissal of the petition was the Court’s view that it could not adjudicate on the issue in vacuum without their being a specific cause of action or without the impleadment of an errant patent applicant as a respondent to the petition. I am not sure the absence of these two ingredients is fatal to a writ petition which challenges the Patent Office's handling of divisional applications as opposed to targeting any patent applicant in particular. The Petitioner may seek consolation from the Court’s direction to the Ministry of Commerce and the Controller of Patents to treat the petition as a representation and consider taking appropriate measures to address the issue.

I agree with the Court on the impropriety of directing the Executive or the Legislature to amend a statute or to interpret it in a manner not envisaged by it. That said, I think that the current declarations sought from an applicant in Form 1 already have the effect of declaring that a divisional application is not identical in its claims or scope to the parent application. In Para 9 of Form 1, which is titled “Declarations”, a patent applicant is required to declare that there is no lawful ground of objection to the grant of the patent. Further, when a divisional application is filed, the applicant has to furnish the details of the parent application and declare that the divisional has been filed pursuant to Section 16 of the Act.

It could be argued that if an applicant knowingly files a divisional patent application which is identical to the parent, he is in violation of his own declarations in Para 9 for having knowingly filed an application which does not satisfy the ingredients of Section 16. If a patent is ultimately granted pursuant to the divisional, it may be revoked under Section 64 on the same substantive grounds on which the parent was rejected, apart from the ground of having obtained the patent on a false suggestion or misrepresentation under Section 64(1)(j) of the Act. Upon revocation, the IPAB or a Court in a counterclaim, as the case may be, could impose exemplary costs for having committed fraud on the Patent Office. That said, the issue remains that there is no mechanism as on date to address the issue right at the stage of examination of the divisional application. One possible solution may be for the Controller General of Patents to issue a practice direction requiring:

A.      patent applicants to submit a copy of the parent application when a divisional is filed;

B.      patent examiners to scrutinize the issue of maintainability of a divisional before examining it for patentability

Comments and corrections are welcome.

Guest Post: PCT National Phase Applications – No Amendments at the time of filing at IPO

A well-wisher from a prominent IP law firm has written the following guest post on the recently issued Circular by the IPO on July 2, 2012 with respect to National Phase PCT Applications. Below is the guest post:

The new Controller General of Patents, Mr. Chaitanya Prasad has issued a Circular with regard to the handling of PCT National Phase applications entering India. The Circular dated July 2, 2012 can be accessed here.

According to the instructions contained therein, the Indian National Phase application PCT application needs to be identical with the published PCT application. The premise given in this regard is that IPO wants to simplify the filing procedure.

The above guidelines have in any way been included in the said Circular as a clarification to the earlier guidelines in the Patent Manual of the IPO which states:

• For the National Phase Application, the title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification [Section10(4A)].
• The applicant may make a request to the Controller for amendment of the complete specification which was filed with the National Phase Application, as a separate request in Form-13, along with the application.

To clarify the last point, the present Circular says that “It is clarified that the IPO does not allow an applicant to amend the specification or the related documents before he actually enters National Phase in India”.

Putting two and two together, what this means is that no amendments can be carried out in the National Phase application, not withstanding any unpatentable subject matter or any noticeable error which would otherwise need a correction, at the time of entering India. Ditto in cases where there is a change in ownership and PCT/IB/306 has not yet been issued.

However, if the applicant wishes to carry out any amendments, he can do so only by way of filing a Form 13/Form 6 along with the necessary fees (even along with the application). Needless to say, the guidelines simply reek of intent to increase Form 13/Form 6 filings and in turn the revenue for the IPO.

In the past, an applicant would simply enter India with an amended set of claims deleting claims which are otherwise unpatentable, thus saving considerable costs. Moreover, if some error had occurred in the published PCT application, they would file the corrected application in India again to save duplicity of efforts and costs.

What is more disturbing is that in light of the new instructions, the applicants will have to pay for claims which may be prima facie unpatentable in India only to have them removed at the time of prosecution. In majority of pharma and biotech cases as well as some software based inventions, the applicant may wish to delete certain claims at the time of filing itself, knowing well the prohibitions under section 3.

The new circular prohibits any such activity and puts the applicants in a double jeopardy – one, they have to pay up for claims containing subject matter otherwise unpatentable in India, and two – those claims will eventually have to be deleted during prosecution. 

Provisional and Complete Specifications- "Fair Disclosure" and Priority Dates

Last evening, a regular reader and well-wisher of the blog, Ms.Anita Kalia, asked me to write a post on internal consistency in Section 11 of the Patents Act. I thank her for giving me something to think and write about.

Before I proceed to discuss Section 11 specifically, I ought to spend some time on provisional and complete specifications. Section 10 of the Act spells out the contents of specifications, both provisional and complete.

Following are contents which are common to provisional and complete specifications under Section 10:

1. Title of the Invention

2. Description of the Invention

3. Drawings, mandatory if the Controller of patents directs

Claims need not and typically do not form part of the provisional specification, but does the Act say that claims cannot form part of the provisional? No.

Under Section 10(4), claims must form part of the complete spec., but they may form part of the provisional. Existence of claims in provisional spec. does not automatically make it a complete spec., if the applicant wishes to file and treat it as provisional.

The question is, do claims filed in a provisional spec. have priority dates? Section 11 of the Act, which deals with priority dates, makes it amply clear that there shall be a priority date for each claim in a complete specification.

Therefore, the concept of priority of claims is to be primarily associated with complete specification, and not provisional. It would be obvious to state that priority date, in a way, is legal fiction which antedates the claim to matter disclosed earlier in the provisional spec. 

Be that as it may, the term “priority date” is not to be used in connection with claims drawn in the provisional spec. The claims drawn in a provisional spec. are given priority dates, only when they again form part of the complete spec.- this is the effect of Section 11(1).

How do we simplify the gist of Section 11? The common sentiment that runs along the sub-sections of Section 11 is the extent of disclosure of claimed subject-matter in the provisional spec. This is evident from sub-section(2) which refers to a “claim (that) is fairly based on matter disclosed” in provisional spec.

Sub-section(3) of Section 11 refers to a situation where a single complete specification is filed pursuant to more than one provisional specifications. Here, there are two situations that the sub-section speaks of:

A. Sub-clause(a) of this sub-section speaks of a situation where the subject-matter of a claim in the complete specification is fairly disclosed in one of the provisional specifications. In this case, the priority date of the claim is the date of filing of the provisional specification in which the claim is fairly disclosed.

B. Sub-clause (b) of this sub-section refers to a situation where the subject-matter of a claim in the complete specification is partly disclosed in both the provisional specifications. This means, the subject-matter is not fairly disclosed in a single provisional specification. Since “fair disclosure” is the litmus test, the provision deems the subject-matter to be “fairly disclosed” only in the later filed provisional specification. This is why the priority date of such claim is the date of filing of the later filed provisional specification.

Now let’s jump to Sub-Section(5) which appears to be (only appears, but is not) at loggerheads with sub-section (3)(b). Sub-section(5) reads as follows:

Where, under the foregoing provisions of this section, any claim of a complete specification would, but for the provisions of this sub-section, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

To me, there is no inconsistency or confusion between sub-section (3)(b) and (5). According to sub-section(5), if the complete specification has two priority dates (although strictly speaking it cannot), it means the subject-matter of the claims have been fairly disclosed in two provisional specifications. In such a situation, the priority date is the earliest priority date.

Simply put, sub-section 3(b) presumes that the subject-matter has not been fairly and intelligibly disclosed until the second provisional specification is filed, where the subject-matter attains completion.

On the other hand, sub-section (5) addresses a different situation i.e. the subject-matter is fairly disclosed in both provisional specifications, and therefore it must receive the benefit of priority of the earlier filed specification.

This is why I said that priority dates are integrally connected to the concept of “fair disclosure” of subject-matter.

Opinions and corrections are welcome!

Prescribed Period for Request for Examination: Delhi High Court Gives an Unwarranted Twist

In a decision that was brought to my attention by my co-blogger Divya, the Delhi High Court may have erred on the prescribed period for filing request for examination of an application.

In a writ petition filed by a patent applicant, Mr. Carlos Alberto Perez Lafuente, the Delhi High Court was required to deliberate on the combined interpretation of Rules 24B(1)(i) and 24B(1)(iii) of the Patents Rules. Following is the Rule:

24B Examination of application: (1)(i) A request for examination under Section 11B shall be made in Form 18 (within forty eight months) from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

What do we observe from Sub-rules (i) and (iii)?

A. Sub-rule (i) refers to Section 11B as a whole, whereas Sub-rule (iii) refers to Section 11B(iv)

B. Sub-rule (iii) refers to secrecy directions, which is absent in Sub-rule (i).

C. Sub-rule (i) uses “whichever is earlier”, whereas Sub-rule (iii) uses “whichever is later”

The question before the High Court was, since Sub-rule (i) refers to Section 11B as a whole whereas Sub-rule (iii) refers to Section 11B(iv), is an applicant governed by “whichever is earlier” or “whichever is later”? I could be wrong, but I think the answer is fairly straight-forward since the reference in Sub-rule (iii) is to applications in respect of which secrecy directions have been issued.

Let’s read Section 11B(4) to verify this:

(4)   In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant:

Provided that -

(i) the applicant may, at any time after filing the application but  before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under  section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

Sub-clause (i) of the proviso to Sub-section (4) of Section 11B refers to the consequence of delayed filing of a request for examination, along with an option for the applicant to withdraw his application any time before grant.

In contrast, Sub-clause (ii) of the Proviso refers to the prescribed period for an application in respect of which secrecy directions have been issued. When this Sub-clause is read with Rule 24B(1)(iii), there is no doubt that the Rule applies to an application in which secrecy directions have been issued. In other words, the “whichever is later” rule applies only to applications in which secrecy directions have been issued.

Surprisingly, the Delhi High Court held to the contrary and observed that there is a confusion as to the application of Rules 24B(1)(i) and (iii). It further went on to support the applicant’s contention that WIPO guidelines prevail in the case of a conflict between the Act and WIPO guidelines, since the Guidelines qualify as administrative instructions within the meaning of Rule 23 of the Act.

I don’t think there was any need to refer to Rule 23 at all the in the first place in the case, because there is no ambiguity or conflict in Rule 24B(1)(i) and (iii).

Opinions and corrections are welcome! 

Lesson for Applicants: No Room for Internal Docketing Errors

Deadlines are of the essence in patents, and I think patent prosecutors understand this better than anyone else (I wouldn’t call myself a patent prosecutor, I am a litigator). 

To avoid human error, most prosecuting firms and in-house IP teams have softwares to remind them of the deadlines, but there is still room for error when entries are made.

A decision of the Delhi Patent Office delivered in a hearing dated July 26, 2011 in connection with the application 5043/DELNP/2011 drives this point home better. The facts of the case in brief are as follows:

1. The application in question was a national phase PCT application filed by Durect Corporation, which claimed priorities from two US applications, the first of which was dated November 3, 2006 and the second was dated June 22, 2007.

2. The national phase application was recieved by the Indian Patent Office on February 8, 2010.

3. The application was returned by the patent office on grounds that the national phase application was filed beyond the stipulated period of 31 months from the date of priority.

4. Durect corp filed a writ petition in which the Delhi High Court directed the Patent Office to consider the patent application of Durect along with its petition under Rules 137 of the Patent Rules for condonation of irregularity.

Accordingly, a hearing was held by the Delhi Patent Office. Durect Corp attributed the delay in filing the national phase application to an error in the internal docket records of the company, wherein the later priority date of June 22, 2007 was entered and treated as the reference date to calculate the 31 month period for national phase entry.

The question before the Delhi Patent Office was if this delay could be condoned under a combined reading of Sections 80 and 81 and Rules 137 and 138.

It was submitted by Durect that docketing error has to be considered as sufficient cause for delay according to the PCT, and Rule 82bis was specifically cited to support this submission. Besides, Section 5 of the Indian Limitation Act too was marshalled to buttress Durect’s case.

In a surprisingly well-researched decision, the Patent Office rejected all the above submissions for the following reasons:

1. The PCT requires national law to provide for mailing delays, which Indian law duly provides for under Rule 7 of the Patent Rules. Docketing errors may or may not be permitted and this is left to the discretion of member nations of the PCT. Indian law does not recognize internal docketing errors as valid reason.

2. Not just that, even the PCT, at best, recognizes a two-month delay in case of docketing errors. In this case, the delay was 8 months

3. Rule 137 is to be employed by the Controller to condone procedural foibles such as filing of the wrong document or application, so long as a third party’s interest is not affected. However, this Rule did not have the potency to cure delayed national phase entry.

4. For Rule 138 to apply, extension must be sought within the stipulated period, which is 31 months in this case, and at best a month’s extension could have been granted, but not an 8-month extension.

Although it is unfortunate that the decision went against Durect, I think this case is a standing example for applicants to ensure that they take utmost care even when entering details in their internal docket management systems.

That aside, this decision, considering the detailed analysis of provisions undertaken by the Patent Office, is a welcome development and is hopefully a sign of better things to come.

Thanks are due to Sandeep Kanak Rathod for bringing this decision to my attention.

Patent Agent Qualifying Examination: Ideas from the Singaporean Model

A couple of weeks ago, a friend and I were having a discussion on potential areas of rationalization in India’s patent law. One area that we, as ardent followers of patent law, discussed was the need to test candidates thoroughly before they are registered as patent agents. (We have earlier discussed issues relating to the practice of patent agents in a few posts)

To qualify in the examination, particularly the drafting part, one requires practice. I don’t think I am the first person to say that the art of patent drafting cannot be divinely acquired at the time of the examination; it needs consistent practice.

This being so, wouldn’t it help to have a mandatory provision in the law where a candidate who applies for the patent agent examination must have worked under a registered patent agent for at least a year or so?

This proposal isn’t new or radical; the Singaporean Patent law already envisages this. Rule 6 of the Patents (Patent Agents) Rules 2001 spells out the entitlements for registration as patent agent in Singapore. The said provision reads as follows:

6.  Subject to rules 7 and 8, an individual is entitled to be registered as a patent agent if he —

(a)  is resident in Singapore;

(b)  holds a university degree or equivalent qualification approved by the Registrar;

(c)  has passed the course specified in Part I of the Third Schedule;

(d)  has passed the examination specified in Part II of the Third Schedule; and

 (e)  has completed internship in patent agency work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule, for —

(i)  a continuous period of at least 12 months; or

(ii)  a total period of at least 12 months within a continuous period of 24 months.

The course referred to in clause (c) is the Graduate Certificate in Intellectual Property Law course conducted by the Faculty of Law, National University of Singapore. The examination referred to in clause (d) is the Patent Agents Qualifying Examinations conducted by the Registrar comprising 4 Papers. Clause (e) requires at least 12 months of continuous internship under a registered patent agent.

What is to be noted is that clause (e) also recognizes an internship in foreign jurisdictions which have been identified in the Fourth Schedule to the Rules. Having said this, I must admit I was surprised to find subjective exemptions to Rule 6 in Rule 8.

Under Rule 8, the Registrar may exempt an applicant from the requirement of Rule 6(c) if he is satisfied that an applicant for registration as a patent agent is sufficiently proficient in IP law. Similar exemptions are provided from requirements of Rules 6(d) and (e). This means the applicant need not even appear for the qualifying examination provided he furnishes evidence to the Registrar for him to satisfy himself of the proficiency of the applicant.

I am not sure if such exemptions would work in India given the numbers, and also because one can never be sure of the transparency of the Indian process. That said, what we could certainly take a leaf out of is the requirement of an internship. This way, we would know that a registered patent agent is not raw, but is at least semi-finished to handle patent applications and to advice clients with some degree of confidence, which is borne out of experience.

The other point to be noted is that there is no provision for a Viva Voce. The examination basically has 4 papers, the first relates to specification drafting, the second to amendment of a specification, the third relates to claim construction to determine validity and infringement and the fourth relates to knowledge of patent law and practice in Singapore.

Even the European Patent Office does not envisage a viva voce in the European Qualifying Examination. Of course, the exam is held over a marathon duration of 20.5 hours, which I think is a fairly rigorous way of filtering candidates!

Viva voce may or may not be an important issue, but the larger point in the big picture is that the quality of candidates who qualify for practice must not be sub-par. Ultimately, patent jurisprudence is applied every time a claim or a specification is drafted, therefore it is imperative to ensure quality at the most fundamental level before we start asking for specialized IP benches. 

Non-Patent Agent Lawyers: Can they or Can they Not "Practice"?

In the last post, I raised a couple of questions on the status of non-patent agent lawyers with respect to their eligibility to advise clients on issues of validity and infringement of patents. These questions were raised in light of the explanation of "practice" under Section 129 of the Patents Act, 1970.

In this post, I intend to read Section 129 of the Act along with Section 132. Section 132 of the Act is a “Savings Clause” in respect of other persons authorized to act as agents. The first obvious saving is the right of the applicant to draft and prosecute his own application and appear before the Controller.

The second saving is with respect to an advocate, who is not a patent agent, being permitted to “take part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act”.

If an advocate, who is not a patent agent, can appear before the Controller in any proceeding under the Act, it is but natural that he is expected to be duly instructed on the facts and issues in the proceeding, which pertain to science as well as the law.

If so, is the saving clause for advocates in Section 132 inconsistent with the explanation of practise under Section 129, which stipulates that only a patent agent can give advice, other than of a scientific or technical nature, as to the validity and infringement of patents?

An advocate, who can appear before the Controller in any proceeding, can appear in pre-grant and post-grant oppositions as well. These are proceedings which involve layered and complex scientific and legal issues, and they pertain to validity of the patent/application. Such being the case, would it make sense to say that a non-patent agent lawyer cannot advice on issues of validity and infringement of patents?

I think the sensible position to take would be that someone who is neither a patent agent under the Act nor an advocate cannot advice on legal issues/”practice” as a patent agent. This could be a plausible middle path. That said, let’s consider another situation to probe Section 132 further.

If an advocate can take part in any hearing before the Controller under any proceeding in the Act, although the savings clause in Section 132 expressly mentions only “hearing”, would it mean that an advocate’s entitlement under the Act is restricted to taking part in a “hearing”?

Can he communicate with the Controller with respect to issues which are related to the hearing? If yes, can he correspond with the Controller with respect to a hearing in a pre-grant opposition? If yes (apologies for sounding repetitive), let’s take this argument a step further.  

A pre-grant opposition is a quasi-administrative process which basically aids the process of examination of an application (courtesy UCB Farchim v. Cipla and the WIPO Standing Committee Report on Opposition Systems, December 2009). This was the reason the Delhi High Court treated the rejection of a patent application as an order passed by the Controller under Section 15, which order was hence deemed appealable before the IPAB under Section 117A.

Such being the case, a pre-grant opposition too is part and parcel of the prosecution of the application. If a non-patent agent advocate can take part in a pre-grant opposition hearing, and if he can correspond with respect to issues related to the hearing or to which the hearing pertains to, he is basically prosecuting the application, in other words, he is “practising” as a patent agent.

Is this intended by the saving clause in Section 132? I would like to know the views of better-experienced practitioners. 

"Practise" as Patent Agents: Scope and Effect of Prohibitions

Section 129 of the Patents Act deals with restrictions on practise as patent agents. It reads as follows:

(1) No person, either alone or in partnership with any other person, shall practise, describe or hold himself out as a patent agent or permit himself to be so described or held out, unless he is registered as patent agent or, as the case may be, unless he and all his partners are so registered.

(2) No company or other body corporate shall practise, describe itself or hold itself out as patent agents or permit itself to be so described or held out.

Explanation: For the purposes of this section, practise, as a patent agent includes any of the following acts, namely,—

(a) applying for or obtaining patents in India or elsewhere;

(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;

(c) giving advice other than of than of scientific or technical nature as to the validity of patents or their infringement.

Sub-section (1) is fairly clear in its import- unless in a partnership firm, all partners are registered as patent agents, the partners cannot collectively hold out the firm as patent agents. Sub-section (2) expressly prohibits any company to hold itself out as a patent agent. There is no leeway even if every employee of the company is a patent agent.

To the extent that a company cannot hold itself out as a patent agent (whereas a partnership firm can), the use of “person” in Section 126, which deals with patent agents, appears to be limited to natural persons alone.

The explanation to the provision is the more interesting aspect of the provision. It says that “practise” includes preparation of specification or documents even for the purposes of the patent law of a foreign country. Why does the Indian Act speak of preparation of patent application documents for a foreign patent regime? Why is the Indian legislature concerned about someone preparing a document for a foreign patent regime?

Does this mean the process of preparation of patent specifications for foreign regimes cannot be outsourced to someone who is not a patent agent within the meaning of the Act? 

The other contentious aspect is that the explanation bars even “ giving advice other than of scientific or technical nature as to the validity of patents or their infringement.” Does this mean a lawyer who is not a patent agent cannot advice a client on issues of validity or infringement of patents?

Obviously these issues of validity (except for a post-grant opposition) and infringement of patents are not argued or agitated before the Patent Office. Such being the case, does the explanation of “practise” in the Act have the effect of barring all non-patent agent lawyers from tendering legal advice on validity and infringement of patents? If advice cannot be tendered, can such lawyers argue on these issues before the Court? Isn't this a question which is to be addressed under the Advocates Act?

I am sure senior practitioners have answers to these questions, I look forward to hearing from them.

Section 39 of Patents Act: Resident in India

I have had discussions with quite a few practitioners on Section 39 of the Patents Act; there is a school of thought according to which, so long as the invention is conceptualized in India, Section 39 applies to the situation. Before I proceed further, here’s Section 39:

39. Residents not to apply for patents outside India without prior permission.

1.  No person resident in India shall, except under the authority of a written permit granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless

2.  an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

3. either no directions have been given under sub- section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

4. The Controller shall not grant written permission to any person to make any application outside India without the prior consent of the Central Government.

5.  This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Sub-section (1) clearly requires only a person resident in India who makes or causes to make an application for patent outside India to:

A. either seek from the Controller written exemption from first filing for an application for patent in India: or

B. File an application for patent outside India only six weeks after filing one in India

For the first filing requirement of Section 39 to apply to an individual/entity, he or it must be a “resident in India”. The Patents Act does not define “resident in India”, but Section 6 of the Income Tax Act does; the portions of Section 6 of the Income Tax Act which are relevant for this post are as follows:

Section 6: For the purposes of this Act,-

 (1) An individual is said to be resident in India in any previous year, if he - (a) Is in India in that year for a period or periods amounting in all to one hundred and eighty-two days or more; or

(c) Having within the four years preceding that year been in India for a period or periods amounting in all to three hundred and sixty-five days or more, is in India for a period or periods amounting in all to sixty days or more in that year.

(b) Being a citizen of India, or a person of Indian origin within the meaning of Explanation to clause (e) of section 115C, who, being outside India, comes on a visit to India in any previous year, the provisions of sub-clause (c) shall apply in relation to that year as if for the words "sixty days", occurring therein, the words "one hundred eighty-two days" had been substituted.

(3) A company is said to be resident in India in any previous year, if – 

(i) It is an Indian company; or

 (ii) During that year, the control and management of its affairs is situated wholly in India.

(4) Every other person is said to be resident in India in any previous year in every case, except where during that year the control and management of his affairs is situated wholly outside India.

If a person does not qualify as “resident in India” within the meaning of Section 6, I am not sure Section 39 applies to him. Further, Section 39 does not apply to all residents in India, it applies only to those residents who make or cause to make an application for a patent outside India.

Broken down into simple terms, Section 39 applies only to those residents who have the power to decide whether or not to apply for a patent outside India. In short, it applies only to applicants/assignees, but does not seem to apply to inventors.

It seems a stretch of an argument to contend that even an inventor in India could be considered as “causing to make an application”. Participating in the act of creating the invention is different from taking a decision to apply for a patent. 

An inventor, in most situations, is simply not the person who can take a call on whether or not to apply for a patent. To apply or not to apply for a patent is the call of the assignee for whom the inventor works.

Even if the inventor is aware of the fact that the invention may ultimately become the subject-matter of a patent application, I don’t think he “causes to make the (patent) application”. He merely makes or causes to make the invention, which may or may not be the subject-matter of a patent application.

What does this translate to? If there is an invention which is the product of the efforts of an entity which is situated in India, but whose control and management is situated outside India, Section 39 does not seem to apply to such entity located in India, notwithstanding the fact that the invention is made in India or the inventors are Indians. This is so because the entity located in India is not a “resident in India”, according to Section 6 of the Income Tax Act.

It’s a wholly different issue that as practitioners, prudence tells us that it is better to err on the side of caution and hence file an Indian application (only to be abandoned later); but strictly speaking, if one had to take a call on pure legal grounds, however academic, Section 39 does not seem to require non-residents to seek written permission from the Controller or file an application for patent in India first.

It is possible that Section 39’s history may allude to a different line of thought. However, legislative intent may be deciphered and used from external aids of interpretation such as legislative debates or committee reports or history of the provision, only when there is an ambiguity in the provision on a plain reading of the provision, not when ambiguity is the product of uninformed or mis-informed “office practice”.

I would like to know the opinions of our better-informed readers.

Rules 137 and 138 of the Patent Rules: Where and Why is the Confusion?

Rules 137 and 138 of the Patent Rules, 2003 have been in the news thanks to a decision of the Madras High Court delivered in January this year. This decision has already been discussed elsewhere; that said, I think it needs a deeper reading because the Court doesn’t seem to have gone deep enough into the relevant provisions.

Let's discuss the provisions themselves to understand the flaw in the Court's approach.

Rule 137. Powers of Controller generally- Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

Rule 138. Power to extend time prescribed- (1) Save as otherwise provided in the rules 24(B), sub-rule (4) of rule 55 and sub-rule (1A) of rule 80, the time prescribed by these rules for doing any act or the taking of any proceeding thereunder may be extended by the Controller for a period.

While Rule 137 refers to the Controller’s general powers with respect to any irregularity in procedure, Rule 138 specifically vests the Controller with power to extend time. In a way, Rule 137 can be compared to Section 151 of the Code of Civil procedure (CPC) which vests a Court with inherent procedural powers.

Similarly, Rule 138 can be compared to Section 148 of the CPC which deals with power to extend time. If this comparison is justified, the principle that has been conventionally and rightly applied with respect to Section 151 of the CPC is that the general/inherent powers cannot and must not be interpreted so as to militate the express word of the CPC.

In other words, a Court cannot employ its inherent powers under Section 151 to render nugatory any other express provision of the CPC (We have discussed this earlier on the blog).

Analogous application of Rule 137 of the Patent Rules too demands that Rule 137 cannot be employed to run counter to any other express provision of the Patents Act.

What is the specific consequence of this proposition with respect to Rule 138? Rule 138 states in no uncertain terms that for an applicant to be entitled to the one month extension envisaged in the rule, the application for extension of time shall be made within the prescribed period.

The reference to prescribed period obviously has to mean the period excluding the one month extension. This is clearly established from the title of Rule 138 which reads “Power to extend time prescribed” (title of a provision is an internal aid of interpretation).

For instance, let us consider the period prescribed by the Act for an applicant to enter the National Phase application in India from the PCT international phase. Rule 20(4)(i) prescribes 31 months as the period within which a National phase application may be made. In other words, any extension under Rule 138 must be over and above the 31-month period.

However, the request for extension under Rule 138 must be made within the prescribed period. Therefore, if an application for extension of time in the case of a national phase application is not made within the prescribed 31 months, a month’s extension under Rule 138 is simply not available for the applicant.

It must be borne that Rule 138, as it exists today, is the result of an amendment vide notification dated December 28, 2004. Prior to the amendment, sub-rule (2) of Rule 138 read as follows:

(2) Any request for extension of time made under these rules shall be made within the extendable period by request unless otherwise provided in these rules.

The rule was amended to substitute “extendable period” with “prescribed period”. Strictly speaking, there is no difference between “extendable period” and “prescribed period” since the former refers to period that can be extended, which is the same as “prescribed period”.

However, probably to avoid confusion, the legislature deemed it fit to use “prescribed period”, making the amendment a clarificatory one.

The essence of all this is that no application for extension of time can be entertained if the request for extension is not made within the prescribed period. Further, what must also be taken into consideration is that Rule 137 cannot override Rule 138 since the latter specifically addresses extension of time (a specific provision usually prevails over a general provision).

Critically, an extension is not permissible with respect to a national phase application since Rule 20 categorically states that a national phase application will be deemed to have been withdrawn if it is not made within 31 months. This means the provision is set into motion automatically, with no room for exercise of discretion by the Patent Office or the Court.

Considering these reasons, I am sure most practitioners would agree to disagree with the Madras High Court’s decision. 

Lessons for Patent Applicants

Last March, the Delhi branch of the Indian Patent Office gave a decision in Weyerhaeuser’s Application numbered 70/DEL/2005. 

The decision, in my opinion, is a must read to understand how the applicant has to strategize responses to examination reports.

In this case, the applicant had initially filed an application for a product patent.

The order says the application, although filed before January 1, 2005, was a non-mailbox application. It is relevant to note here that prior to the 2005 amendment to the Patents Act, product patents for pharmaceutical substances and substances manufactured by chemical processes were barred.

If Weyerhaeuser's application was for a kind of wood-pulp, it would fall within the scope of the products for which product patents were barred under the un-amended Act. I am not sure how was this treated as a non-mailbox application, unless the applicant had sought only a process patent. But the principal claim reads thus:

(1) A lyocell product, comprising:

at least 7% hemicellulose by weight; and at most 93% cellulose, wherein the pulp used to make the product has a viscosity less than 32 cP, a copper number less than 2, a weighted average fiber length less than 2.7 mm, and a coarseness less than 23 mg/100 m, wherein the pulp is derived from a wood material with a specific gravity of less than 0.41.

Clearly, the application was for a product patent. Anyways, the applicant's grievance was that despite the 2005 amendment coming in force during the examination of its application, the Patent Office did not examine its application for grant of a product patent.

This, according to the applicant, was owing to an internal decision taken by the Patent Office during that period, which disallowed product patents even after the amendment to the Act. Did the decision have  statutory sanction?...

Let me clarify the facts further. The "non-mailbox application" claimed a product patent, but was disallowed:

1.  firstly, because the patent office took an internal decision not to grant product patents even after amendment to the Act allowing product patents for all technologies

2. secondly, because the application was deemed to have been abandoned under Section 21 of the Act, namely the application was not put in order for grant within the time prescribed in Section 21 and

3. finally, because the invention was deemed to have been anticipated by a bunch of prior documents.

Meanwhile, during the pendency of the "non-mailbox application", the applicant, in order to secure his interests, thought it fit to file a divisional application during the pendency of his parent non-mailbox application.

This too was objected to by the Patent Office citing Section 16(2) and (3) of the Act. Section 16, in substance, proscribes claiming substantially the same invention in the parent and the divisional, to avoid double-patenting.

On Section 16, the Patent Office may have got the law right, but I think the non-application of the Act on grant of product patents seems to have cost the applicant dearly. That said, the applicant too ought to have appealed against the order of rejection of parent application, instead of filing a divisional.  (Probably he did, I don’t know for sure...)

I think this case is a lesson for practitioners to take into account unpredictability when they prepare their responses to office actions. It goes without saying that this also requires practitioners to bear in mind that not  everyone shares the same views, even those which most of us take for granted, when it comes to the interpretation of the Act.