I have been meaning to write on
this issue for quite some time because there appears to be this misconception
that non-response to a pre-grant opposition is not adverse to a patent
application. In this post, I intend to address this issue layer by layer.
The procedure to be followed in a
pre-grant opposition is prescribed in Rule 55 of the Patents Rules, 2003. The
Act and the Rules refer to the pre-grant opposition as a “representation”,
which the Delhi High Court in UCB Farchim v. Cipla
(Refer to Para 13 of the judgment) interpreted
as an “aid” to the process of examination of a patent application.
Upon receipt of a pre-grant
opposition, the Controller is not expected to mechanically inform the patent
applicant of the opposition. In fact, Rule 55(3) clearly requires the
Controller to consider the representation, and apply his mind. Only
if the Controller is of the belief that the representation could lead to either
refusal or amendment of the patent application, he shall give
notice of the representation to the patent applicant and send him a copy of the
representation.
This firstly means that a
pre-grant representation may be rejected in
limine if the Controller does not believe that the representation affects
the patent application. The second consequence is that since the pre-grant
mechanism has been interpreted by the Delhi High Court as being an aid to the
examination process, the issuance of notice of the pre-grant opposition must be
treated as being similar to the issuance of an examination report, if not the
same.
The reason the two are similar
but not the same is because in a standard examination report issued by the
Controller under Rule 24B, the patent applicant has 12 months from the date of
receipt of the FER to put his application in order for grant. However, under
Rule 55(4), the patent applicant gets a maximum non-extendable period of 3 months
from the “date of notice” to respond to the pre-grant opposition. (Rule
55(4) does not refer to “date of receipt of the notice”, however the general
rule of notices could require this to be read as “date of receipt of the notice”)
The period of 3 months under Rule
55(4) is non-extendable because Rule 138, which vests the Controller with the
power to extend time, clearly excludes Rule 55(4) from its purview. Therefore,
in the event the patent applicant fails to file his response to the pre-grant
opposition within 3 months from the “date of notice”, he cannot be permitted to
respond to the objections raised in the pre-grant representation beyond that
period, nor does the Controller have the right to extend the time.
Now that the issue of time
extension has been irrefutably addressed, what needs to be addressed next is
the true consequence of not responding to a pre-grant opposition. While Rule
58, which deals with a post-grant opposition, clearly states that if the
patentee does not respond to the post-grant opposition in time, his patent
shall be deemed to have been revoked, Rule 55 is silent on the issue of
non-response to a pre-grant opposition by the patent applicant.
Does this mean there is no
adverse effect because Rule 55 is silent? Or is Rule 55 silent because the
issue is addressed by another provision? This is where one needs to refer to Section
21(1) of the Patents Act, which reads as follows:
21. Time for putting application
in order for grant: (1) An
application for a patent shall be deemed to have been abandoned unless, within such period as may be
prescribed, the applicant has complied with all the requirements imposed on him
by or under this Act, whether
in connection with the complete specification or otherwise in relation
to the application from the date on which the first statement of objections to
the application or complete
specification or other documents related thereto is forwarded to the applicant
by the Controller
Section 21(1) requires the patent
applicant to comply with all requirements imposed on him by or under the Act
within the prescribed period, failing which the application shall be deemed to
have been abandoned. This mandatory requirement applies to filing of a response
to a pre-grant opposition as well.
It is to be noted that Section
21(1) does not restrict itself to responding to the FER issued by the
Controller under Rule 24B, but goes on to include “other documents related
thereto” which is forwarded to the patent applicant by the Controller. This
must include the issuance of notice under Rule 55(3) to the pre-grant
opposition as well.
Further, the prescribed period
referred to in Section 21(1) in relation to a pre-grant opposition is 3 months.
Consequently, if a patent applicant does
not file his response to a pre-grant opposition within the non-extendable 3
months from the date of notice, he shall be deemed to have abandoned his application.
What is also critical is that the
effect of Section 21 being automatic, upon failure by the patent applicant to
comply with the requirements of the Act within the prescribed period, the
Controller has no power to intervene and annul the effect of this deeming
provision. Therefore, no reminders/letters can be sent by the Controller to the
patent applicant if the applicant fails to file a response to the pre-grant
opposition within 3 months from the “date of notice”.
Comments and Corrections are
welcome!
Dear deepak,
ReplyDeleteAs per rule 55 (4) it is optional on the part of applicant to file a response to a pre-grant opposition. Hence when the rules explicitly states a thing as optional then your anology of importing a time line for the same and making it mandatory is questionable.
Secondly if there is an oposition on record and in reply to first examination report the applicant amends his claim such that each and every alligation of a pre-grant is taken care of, then also an applicant is not bound to reply to a pre-grant.
Thirdly if we put pre-grant opposition in the ambit of other documents mentioned in sec 21, then the time period to comply under this sec is 12 months. Hence with harmonious construction then a reply to a pre-grant automatically gets 12months time which is flawed.
Regards
Dear Anon,
DeleteThanks for the comment. I was hoping someone would raise exactly the same points as you do :-) Thanks to your comment, I'll be able to prove my point even better. I wish to draw your attention to Rule 58 of the Patents Rules which deals with filing of a counter-statement by the patentee in response to a post-grant opposition. Sub-rule (1) of Rule 58 too states "if the patentee desires to contest the opposition, he shall leave at the appropriate office a reply statement....". So clearly, filing of a reply statement by the patentee in response to a post-grant opposition too is "optional", just as filing a response to a pre-grant representation is under Rule 55(4). But has that stopped the legislature from providing for a deemed revocation in the event the patentee fails to file his reply statement within the prescribed time period which two months + one month if extension is sought under Rule 138? Clearly No. Therefore, just because the filing of a response to an opposition is optional, it does not follow oppositions have no meaning or they lack seriousness or they do not result in adverse consequences to the patentee. If your logic were to be accepted, then the very purpose of providing for oppositions would be futile because the patent applicant/patentee could choose to not respond to the oppositions with impunity.
Now let's address the second limb of your comment. Good point and I agree to a limited extent that if the patent applicant responds to the pre-grant along with his reply to the FER, it could be legitimately deemed as a response to the pre-grant. But, the reason I agree only to a limited extent is this- as I said in my post, the time period for responding to a pre-grant is only 3 months from the date of notice. This time limit has to apply regardless of how the patent applicant chooses to address the pre-grant opposition. There is no window whatsoever under the Act or the Rules to extend the 3 month period to respond to the pre-grant opposition, even if such response is included as part of the reply to the FER. Please show me from the Act and rules any window which permits extension of the 3 month period. I am pretty sure there is no such window.
Moving to the third limb of your argument, I am assuming you are a patent agent (not a trained lawyer). Therefore, probably, your opinion is based on office practice, and not on principles of statutory interpretation. I would urge to re-look Section 21 and then read my post again. This is because the very object of the post was to drive home the point that contrary to popular assumption, Section 21 does NOT limit itself to merely responding to the FER within the 12 month period. It applies to all steps that a patent applicant must take to fulfill the requirements of the Act within the time prescribed in order to put the application in order for grant. What this means is the words "time prescribed" shall refer to the corresponding time prescribed under the Act for the relevant steps. Consequently, the time prescribed to respond to an FER would be the 12 month period under Rule 24B, whereas the time prescribed to respond to a pre-grant opposition is 3 months under Rule 55(4). This is harmonious and purposive construction of Section 21 because it does justice to the object of providing for a pre-grant opposition, which is to weed out patent applicants who do not take pre-grant oppositions seriously. I'd like to read your counter-arguments, if any.
Best Regards,
Sai.
Dear deepak,
ReplyDeleteThanks for your clarification. But still in my opinion your point one is not satisfactory. If u see in a post grant opposition also, it is optional on the part of patentee to contest the opposition, but if patentee do not contest it the direct consequence is revocation of its patent.
This is not the case with a pre-grant, failure of non-responding cannot lead to application being deemed abandoned.
The only purpose of a pre-grant is to assist controller during prosecution.
If there is no no reply to a pre-grant then it becomes the duty of the controller to take into consideration the complete specification and other documents including any submissions of the applicant and the pre-grant opposition on record to either grant/require amendments/reject an application.
A pre-grant opponent may request the controller to grant him a hearing before taking any decision.
Regards
Dear Anon,
DeleteYour comments reflect the prevalent practice, which I believe has no basis in the Act or the Rules for the following reasons:
1. In my last comment, I had asked you to point any provision which permits the extension of the 3-month period provided for under Rule 55(4). Since you have not been able to, I am assuming you concede such an extension is not possible. In my humble opinion, since the patent applicant cannot respond to the pre-grant beyond the three month period, it makes very little sense to say that the Controller can circumvent this by providing a hearing or by directing amendment of the patent application. Please understand that when the patentee's patent is deemed to be revoked despite the patent being granted post examination if he doesnt respond to a post-grant opposition, it makes very little sense to say that the rights of a patent applicant in a pre-grant opposition are greater than the rights of a patentee in a post-grant opposition.
2. Also, the flaw in your approach is this- merely because the pre-grant opposition aids the process of examination, you are applying all rules of examination to the pre-grant opposition. This is simply not permissible. The pre-grant opposition may aid the process of examination, but it is still a stand-alone mechanism whose timelines and consequences have their own footing under the Act. Therefore, if the patent applicant fails to adhere to the requirements of the pre-grant mechanism, he must bear the consequences of such failure, which is abandonment.
3. I'd request you to read Section 14 again carefully. Section 14 deals with the need for a hearing, upon request, only with respect to an adverse examination report, NOT with respect to a pre-grant opposition. A hearing under a pre-grant mechanism is possible, only if the applicant has evinced a desire in contesting the opposition by filing a counter-statement and evidence. If no such reply is filed, it clearly means he does not wish to contest the pre-grant opposition.
4. Let me take the bull by its horns and say that the Controller has no power to invoke his discretion under Rule 129 either to grant a hearing, simply because failure to respond to pre-grant WITHIN the non-extendable period of 3 months amounts to non-compliance with the requirements of the Act under Section 21, and therefore leads to deemed abandonment. Consequently, there is no scope for interference by the Controller with the said consequence.
Best Regards,
Sai.
Let me just add a few points here -
ReplyDelete(1) it would be incorrect to read R55 and R58 in the same breath - the intended consequences of non-compliance are different. Under R58, the patent is not "deemed abandoned" - it is revoked - presumably because the patentee does not wish to contest the opposition. Under R55(4), and if we are to accept Sai Deepak's premise, the application is "deemed abandoned". Therefore, for Anon - it is incorrect to read the two sets of procedures are being the same in intent and scope. Indeed, the Delhi High Court did bring this out beautifully in its UCB Farchim judgment.
(2) Would tend to agree with Sai Deepak's premise that Section 21 is not limited to an examination proceeding under Section 13 et seq. Indeed, the entire chapter is not limited to examination alone. Section 21 appears at first reading to be a catch-all requirement for the applicant. The 12 month period is specifically provided for only with respect to the first statement of objections - a better term than "FER" that is commonly used. In fact, the term "First Examination Report" is actually not used in the Act or the Rules.
For any other action, the time prescribed has to be determined from the Act/Rules, and if not present there, from the time prescribed by the Controller in his/her official communication. Several such instances arise. Let me give a few examples
(a) Section 8(2) requirement is a requirement under the Act which must be complied with within 6 months of it being raised. The fact that it is usually raised in the First Statement of Objections is a matter of convenience for the patent office. The Act does not stipulate that it should be raised in the FSO (=FER);
(b) Section 138 - requiring filing of the priority document - the Act does not prescribe a period. The period is prescribed in the Rules and runs from the date of communication of this requirement by the Controller. Again, the fact that this requirement is conveyed in the FSO is a matter of convenience for the IPO, and not a statutory remit.
In both cases, failure/non-compliance would give strong reasons to deem the application abandoned.
And finally, for Anon again - it is erroneous to say "If there is no no reply to a pre-grant then it becomes the duty of the controller to take into consideration the complete specification and other documents including any submissions of the applicant and the pre-grant opposition on record to either grant/require amendments/reject an application."
In fact, the pre-grant is supposed to be communicated only AFTER the Controller makes a determination that the applications should be refused or amended - See Rule 55(3). Again, the fact that the IPO simply forwards the pre-grant and without any comment/finding in its cover note does not mean that this duty is being complied with - wonder when an applicant faced with a pre-grant will raise this issue.
Sorry for the long post - but it is essential to read the Act and the Rules again and again to get a true sense of what is intended therein - even if it does not match with the practice of the IPO.
Regards,
Nataraj
Dear Sir,
DeleteThanks for your comment! I agree with you. That said, Rule 24B(3) does use the term "first examination report", while Rule 24B(4) and Section 21 refer to "first statement of objection". Wonder if there is a reason the Act uses two different terms.
Sincerely,
Sai.
Does the 12 month period for Answering FER starts from the receipt of FER by applicant or issuance of FER ?
ReplyDelete