In the last two posts, I had written about the consequences under Section 21 of the Patents Act in not responding to a pre-grant opposition within the prescribed time period. In this post, the idea is to take a concise re-look at the framework of the pre-grant mechanism, the scope of Sections 21 and 14.
Let me first address the scope of Section 14. Here's the provision:
14. Consideration of the report of examiner by Controller: Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.
The underscored portions of the Section are relevant to the issue at hand. A hearing under Section 14 applies only with respect to an adverse examination report, not to a pre-grant opposition.
It also needs to be pointed out that a hearing under Section 14, even with respect to an adverse examination report, cannot be granted beyond the 12 month period mentioned in Rule 24B(4). I had said this about three years ago elsewhere. This is because, contrary to what was incorrectly held in Ferid Allani v. Union of India, the 12 month period under Rule 24B(4) is non-extendable, which is abundantly clear from Rule 138.
Coming back to the issue of pre-grant opposition, Section 14 is not an omnibus hearing provision which can invoked at every instance. Rule 129 of the Patents Rules is an omnibus hearing provision, which too can be invoked only if it does not interfere with the deemed abandonment under Section 21.
The other reason why Section 14 does not apply to a pre-grant opposition is because Rule 55(6), subject to Rule 55(4), takes care of the hearing requirement with respect to a pre-grant opposition. Therefore, Section 14 is irrelevant in so far as a pre-grant opposition is concerned.
The sum and substance of this is, Section 14 cannot come to the rescue of a patent applicant who has failed to respond within the non-extendable 3 month period to a pre-grant opposition.
It also appears that a few of us seem to be of the view that Rule 24B and the non-extendable time period of 12 months prescribed therein, apply to a pre-grant opposition. This is again erroneous because Rule 55 is self-sufficient with respect to the time period available to a patentee to respond to a pre-grant opposition. Therefore, the only applicable time-period to respond to a pre-grant is the 3 month period provided under Rule 55.
One of the reasons a few people apply the rules and timelines of examination to the pre-grant opposition is because they assume that pre-grant opposition falls with the definition of examination under Section 12. Such assumption is incorrect because a pre-grant opposition under Section 25(1) is a stand-alone mechanism which aids examination, but is not technically a part of examination under Section 12.
As regards my contention that abandonment under Section 21 is the inevitable consequence of not responding to a pre-grant opposition, I wish to reiterate that a pre-grant opposition notice under the Act is not a mechanical one. As I said in the earlier post, it is issued, or at least presumed to be issued, only after application of mind by the Controller who believes that the pre-grant representation deserves his consideration and also merits response from the patent applicant.
Therefore, if the patent applicant fails to respond within 3 months to this considered notice of pre-grant opposition issued by the Controller, there is no reason to believe that he is still interested in pursuing the patent application. It is precisely to address such situations that Section 21 exists. To restate what I said in the earlier post, Section 21 does not limit itself solely to issuance of and response to examination reports. It applies to all necessary steps that a patent applicant must take within the applicable prescribed time period to evince his seriousness in keeping the application alive, failing which deemed abandonment follows automatically.
Importantly, if office practice does not respect the inviolability of Section 21, it does not mean that office practice is correct or that the timelines prescribed in the Act and the Rules are not mandatory. It only means that office practice is wrong, there is no other way of saying this.
Comments and Corrections are welcome!
Dear Sai,
ReplyDeleteI beg to differ with you on couple of instances in your last few posts pertaining to interpretation and/or establishing correlation amongst few provisions and rules thereof unless those become absolutely clean for the reasons mentioned hereinafter. My biggest reservation, off course, is to accept the conclusion that if a pre-grant representation remains unanswered by an applicant/patentee, Sec-21 would operate to bring a “deemed abandonment”.
Since, in last few discussions we actually are trying to make or bring out inter-relations among different provision driven by a void (what if patentee fails to file reply to pre-grant opposition within timeline given under rule 55(4)), any interpretation that results adversity to an applicant should be based beyond all reasonable doubts. Also, there is absolutely no point in believing that, keeping in mind the provision of Sec-21, it was an intentional miss by the legislator for not putting a direct consequence on failure to respond a pre-grant representation similar to rule 58 (2) like “deemed abandonment” for post-grant oppositions.
Sec-21 on a plain reading mandates the applicant/patentee only, to comply within a window of 12 months (rule 24B(4)) with the requirements sought from the patent office through any communication including office actions during examination (CHAP V-Publication and Examination). In no way it can be interpreted that sec-21 mandates patent office to dispose of the application within 12 months either in a refusal/amendment/grant in whatever way may be- through written communication or oral (hearing). Does it? Further it should be noted that the title of sec-21 is “Time for putting application in order for grant” and rule 24B(4) without any ambiguity or mistake, clearly speaks that the timeline under section-21 is 12 month from the date of FSO/FER. And in the event the applicant/patentee fails to adhere to this timeline, the application would be deemed to have been abandoned. Thus it is necessary that for resulting a deemed abandonment under sec-21 time elapse should be of the order of 12 months and nothing else. In essence, sec- 21 has two essential element i) 12 month time line ii) deemed abandonment. In other words sec-21 is a time bomb that blasts only after 12 months, not before. Accordingly sec-21 cannot trigger any time line nor deemed abandonment if an applicant/patentee fails to respond to a pre-grant opposition at least for the reason that timeline prescribed under sec-21(12 months) is in conflict with timeline prescribed for responding to pre-grant opposition(3 months).
Thus, consequences of not responding pre-grant may require further interpretation rather than a forced/tempted interpretation.
I also differ in the opinion that hearing under sec-14 has to take place within 12 month, as interpreted from the joint reading of sec-14, sec-21 and rule 24B4. Like I said earlier, sec-21 mandates patentee to adhere to timeline of 12 months. Now what the act mandates to the patent office or controller so far as examination is concern comes from Sec-14 which says that controller has to give the applicant a hearing to dispose of the application (refusal/amendment/grant) provided only that the applicant has put a request for the hearing within the prescribe period (12 months). Nothing in sec-14 implies that hearing to dispose of an application should be held within 12 months or within any time window. Further, under sec-80, applicants request for hearing along with responding to office action (at least 10 days before the elapse of prescribed period) or other communications during examination. And like sec- 14, nothing in Sec-80 can imply that a hearing should occur within a time window.
Why so ambiguity in the act at the first place? Why US/EPO/JPO schemes are years ahead? Rhetoric should be taken on the flaws in the act rather than in the practice I guess.
I sincerely hope above submissions should not be taken as any argument to prove who is correct or incorrect and it should only be taken as discussion to find what is correct.
Best regards.
TS
Dear TS,
DeleteThanks for the comment. My attempt on the blog has usually been to focus on an issue, as opposed to an individual, except in situations where I am forced to respond to motivated ad hominem attacks which come from known and expected quarters. So rest assured, as long as comments don't fall under that exception, I don't treat discussions and comments on the blog as opportunities to put down someone's opinion or to insist on my opinions being the only way of looking at issues. If that were the intention, I might as well write a diary or a book on what I think is the law, instead of airing my opinions in public and soliciting opinions with a view to engage peers in a discussion.
Coming to the merits of your comment, let me rephrase your contention- your point is that Section 21 read with Rule 24B(4)is a condition that applies to patent applicants, and not to the patent office. Therefore, according to you, the patent office can fix a hearing beyond the 12 month period. I must admit it sounds fair and correct on first blush. That said, I dont think this interpretation will pass muster upon deeper and purposive scrutiny. Let's first understand what is the meaning of "putting an application in order for grant". An application would be considered as having been put in order for grant if all outstanding objections have been overcome, not just responded to by the patent applicant, and the patent office has no more objections to the grant of the patent. Clearly, this means that if the hearing is meant to address the objections of the patent office to the grant of the patent, such a hearing must be fixed before the expiry of the 12-month period and not after. This is the clear answer to your poser. The unfortunate part for patent applicants is that the Act or Rules do not prescribe timelines within which the patent office must respond to the reply of the patent applicant to the examination reports. In other words, there is nothing in the Act which stops the Patent Office from issuing eleventh hour office actions, and thereby putting the patent applicant under immense pressure.
CONTINUED
As regards the applicability of Section 21 to a pre-grant opposition, I think it is best to agree to disagree because I just cant find any statutory basis for your restrictive reading of Section 21. Also, your approach to Section 21 flies in the face of clear precedent. Let me explain what I mean. When questions were being raised before February 8, 2010 about whether or not rejection of a patent application in a pre-grant opposition is appealable under Section 117A, the patent office used exactly your kind of argument to say that Section 117A does not mention an order passed under Section 25(1). Therefore, according to them, such rejection was not appealable under Section 117A. The flaw in this position was clearly pointed out to them in UCB Farchim v. Cipla (delivered on Feb 8, 2010), when the Delhi High Court held that a rejection of the patent application pursuant to a pre-grant opposition is essentially a refusal to grant under Section 15 for non-compliance with the requirements of the Act. This is exactly my approach as well with respect to applicability of Section 21 to Rule 55(4). Rule 55(4) need not mention expressly the consequence of not filing a response within the 3 month period, because Section 21 is a provision with extensive scope to address various situations under the Act which would amount to abandonment. You cannot use Rule 58 as an example to insist that Rule 55 too ought to have contained an express mention of abandonment. This is because there is no other provision of the Act which applies to non-response to a post-grant opposition, thereby necessitating express mention of "deemed revocation" in Rule 58. In contrast, Section 21 applies only to patent applications, not to patents, and it applies to all forms of abandonment. Therefore, there was no need to specifically spell out the consequence of non-response in Rule 55 itself. The practice of legislative drafting is to avoid listing several specific situations, when they can be covered by one broadly worded provision. Section 21 is one such provision. Therefore, I find no reason to change my view that Section 21 applies to pre-grant oppositions as well.
DeleteAgain, on Section 80, kindly read the provision carefully again. Section 80 clearly requires the applicant, who seeks the hearing, to apply for the hearing within the prescribed time period. The prescribed time period for a Section 14 hearing is the 12 month period, and not after that because the purpose of the hearing is to "put the application in order for grant". Let me draw your attention to the Proviso to Rule 28(2) of the Patent Rules. The proviso clearly states "Provided that such request (for a hearing) shall be made on a date earlier than ten days of the final date of the period referred to under sub-section (1) of Section 21". This proves very clearly that the intention is to preserve the sanctity of the 12 month period of Rule 24B(4). Again, please read Rule 28(3). It clearly requires the Controller "to FORTHWITH fix a date and time for hearing HAVING REGARD TO THE PERIOD REMAINING FOR PUTTING THE APPLICATION IN ORDER OR TO THE OTHER CIRCUMSTANCES OF THE CASE". For the sake of clarity, let me state that the meaning of "forthwith" is "immediately"/"without delay". Why would there be such a restriction on the Controller's power to fix the date of hearing if the Act permitted a Section 14 hearing beyond the 12-month period of Rule 24B(4)? I think I have abundantly made my point. I'll wait for your counters, if any.
Best Regards,
Sai.