Monday, 9 January 2012

Interpretation by the Delhi High Court on the disclosure of foreign filing details in India 

Section 8 (Information and undertaking regarding foreign applicaton), Section 64(1)(j)[False suggestion or representation] and Section 64(1)(m)[Non-disclosure of information under Section 8].

The Delhi High Court in Chemtura Coorporations v Union of India & Ors. 2009(41) PTC 260(Del) interpreted requirement under Section 8 (Information and undertaking regarding foreign application) of the Act.

In this case plaintiff submitted its National Phase Application for grant of patent in respect of side bearing pad assembly corresponding to the PCT Application dated 15th September 2000 to the Controller of Patents in Mumbai on 21st June 2001. Among other documents, it enclosed with the said application the completed Form 3 and the international search report. That search report merely indicated the filing of a patent action by the Plaintiff elsewhere. In this case after the filing of Form-3 in India by Chemtura before the Patent Office, there were series of developments in respect of US Patent Application including final office action whereby certain claim were rejected that followed the preliminary amendments of the claim.

As per section 8 there is a two fold obligation on the applicant viz. 

Firstly to file along with the application a statement setting out the detailed particulars of the application filed by such applicant "in any country outside India in respect of the same or substantially the same invention" [8 (1) (a)], and 

Secondly to furnish an undertaking that up to the date of the grant of patent in India the Applicant will keep the Controller of Patents informed in writing "from time to time" of detailed particulars as required under the previous subsection[8 (1) (b)]. 

The only guideline available for meeting such obligation is the time frame of 6 months from the date of filing of such application outside India within which the applicant has to inform the Controller [Rule 12, The Patent Rules 2003 as currently amended].

In this case one of the grounds urged by the Defendants in the infringement proceeding was that the Plaintiff has been in breach of Section 8 of the Act thus rendering its patent vulnerable to revocation in terms of Section 64 (1) (j) and (m) of the Act.

The court held that the non-supply of search and examination report of foreign countries in spite of the requirement of Controller of Patents through his letter was prima facie held to be non-compliance of the requirement of Section 8(1)(b) and Section 8(2) of the Indian Patent Act.

Regarding the question whether the requirement of law is merely to ‘indicate’ the status of an application for grant of patent in any other country outside India. Looking at the scheme of the Act the court noted that Section 8(1)(a) of the Act requires the applicant to furnish to the Controller all such information, which he possess or should possess as regards his application in a foreign country. Further, Section 8(1)(b) requires the applicant to furnish ‘up to date specifications’ and ‘detail particulars’ from time to time. Therefore, national phase application which merely indicates the status of the application at the said date was held not be in consonance with the statutory requirement of law.

The court refused to agree with the submission of Plaintiff that the search and the examination report is required to be furnished only if it has resulted in the allowing of the Plaintiff’s claim by the Patent Office in a foreign country. The word "including" only means that the Plaintiff has to additionally furnish the search and the examination report where applications have been allowed. It was incumbent on the Plaintiff therefore to furnish to the Controller of Patents any search or/and examination report that may have been issued by the Patent Office either in US or Europ.

The court did not accept the submission, made by the plaintiff referring to the Halsbury’s Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act.

The court observed that it cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims.

Interpretation of law of filing divisional application India

Section 16 (Filing of Divisional Application)

The Intellectual Property Appellate Board (IPAB) in LG Electronics vs. Controller of Patents gave a ruling on the maintainability of divisional applications under Section 16 of the Indian Patents Act. 
In said order, the IPAB held the following with respect to voluntary filing of divisional applications:
 a) The applicant can file more divisional applications if the invention disclosed in one patent application do not relate to single invention (suo moto) or to a group of the inventions forming a single inventive concept; and

 b) The divisional application should not include any claim already claimed in the parent application (to avoid double patenting). 

The IPAB further stated that the intended purpose of the statutory provisions relating to division of applications are
i)                  to cure any defect relating to multiplicity of invention in one application,
ii)                 to enable filing of division application to protect the multiple inventions disclosed in one invention, and
iii)               to allow the priority date of the parent application for the divisional application.

Date of issue of letter patent certificate and date of recordal/grant are the same 

Section 25 (Opposition) and Date of grant of the patent.

The Delhi High Court in Dr. Snehlata C Gupte v Union of India & Ors (W.P. (C) No. 3516 and 3517 of 2007;) clarified the law as to the date upto which pre-grant opposition is maintainable.
In a batch of writ petitions that were clubbed together in this case In this case as with many such cases, before the issuance of the relevant patent certificate (which has been known to take its own time in many cases), another pre-grant opposition had been filed. And that too by someone very closely associated with the earlier pre-grant opponent. In other words, the same party was using an ambiguity in the law to file opposition after opposition, a practice referred to by the judge as "serial oppositions" and castigated by him as an abuse of process of the law.

In this case the issue was what is the actual date of grant of a patent? Is it the date of grant of the patent certificate? 

Petitioners argued that it is the date of the grant of the patent certificate because the petitioner wished to file a pre-grant opposition, even after the Patent Controller had disposed of an earlier pre-grant opposition on similar lines and decided to grant the patent.

In this case, Delhi High Court held that a patent comes into force on the day in which the Controller makes a decision to grant a patent. The issue of a certificate at a later date is then nothing more than a mere formality.
At the core of the legal challenge was the existing process, which resulted in a time gap between the grant of a patent and the issue of the patent certificate. The court held that the date of the grant of a patent is the date on which the controller passes an order to that effect on the file i.e. on the day in which the Controller makes a decision to grant a patent. The issue of a certificate at a later date is then nothing more than a mere formality.

The judge also came down strongly against the practice of filing serial pre-grant oppositions. through aliases..a practice now fairly common in most pharmaceutical patent cases.

Time limit prescribed under the Indian Patents Act and Patent Rules for the disposal of the Application is to be followed in the letter and spirit

Section 12 (Examination of the Application) and Rule 24B (2)(i).

In Dr. Vinitha Ponnukutty v Controller of Patents & Designs & anr. (W.P. Nos. 20683 & 20684 of 2010; Madras High Court), Madras High Court observed that the time limit prescribed under the Indian Patents Act and Patent Rules for the disposal of the Application is to be followed in the letter and spirit.

In this case the petitioner has filed a request for examination on 30.10.2008 after paying requisite fee. As per Section 12(2) of the Patents Act 1970 read with Rule 24-B(2)(i) and (ii) of the Patents Rules 2003, when a request for Examination has been filed, the Controller shall refer the application and the specification and other document to the examiner within one month from the date of request for examination. Thereafter, the examiner to whom the application and the specification and other documents related thereto are referred under Section 12(1) shall ordinarily make the report to the Controller within one month but not exceeding 3 months. 

But in the present case, the applications submitted by the petitioner ought to have been referred to the examiner on or before 30.11.2008 and such examiner thereafter should have given his report to the Controller of Patents on or before 20.2.2009. Subsequently, the examination report along with the applications and the specification should have been reached the petitioner or her agent by 30.4.2009. In spite of the directions mentioned as above, the petitioner's application has not been referred to the examiner for preparation of the report by the respondents.

Therefore, the petitioner apprehending her inventions would be tampered with by somebody has filed a writ petition in the Madras High Court.

Whether time limit prescribed under the Indian Patents Act for the disposal of the Application is to be followed in the letter and spirit?

The court held that a mere reading of the above mentioned provisions clearly shows that every application filed for registration of the same has to be disposed of within a stipulated period. The Court ordered the respondent to process the Applications of the Petitioner by referring the same for examination.

The court made it clear that the Respondent’s excuse of the shortage of number of hands to process the application do not merit any consideration at all  as time specified in the Act for the disposal of the application was to be followed in the letter and spirit.

The court ordered ministry of Industry and Commerce to  look into the shortage of staff so that the inventions made by the scientists shall not be diluted by not registering them as per the mandate mentioned above.

Madras High Court in Nokia Corporation v Deputy Controller of Patents (W.P. No.2057 of 2010; Madras High Court) takes lenient view of the delay in filing its national phase application.

Rule 20(4)(i) [Time limit for filing of the National Phase Application], Rule 138 (Extension of time prescribed)

In this case the Patent Application was rejected on the ground of delay, stipulating that the expiry of time restricts filing of a national phase application and Rule 22 of the Patents Rule, 2003 provides that the application is deemed to be withdrawn if the applicant does not comply with the requirement of of rule 20(4)(i) of the Patents Rules, 2003 (as amended). 

The deputy controller declined to condone delay on the ground of a docketing error and reasoned that immunity in such cases corresponds to delay or unavoidable loss or interruption in mail services only, and other grounds are to be considered at the discretion of the patent office on merits.
In this writ in the Madras High Court, Nokia sought to quash the order of the deputy controller of patents not condoning the delay in filing its national phase application.

The Madras High Court on the writ seeking to quash the deputy controller's order disagreed that an extension of time under Rule 138 could only be moved within the period stipulated under Rule 20 (31 months), observed that a reading of Rule 138 would show the usage of two terms: (1) prescribed time under the rules; and (2) period for which time could be extended. The time prescribed under Rule 20 is 31 months, and the period that could be extended by taking into consideration the facts and circumstances, is one month, therefore the controller under Rule 138 is vested with the power to extend the period of submitting the application by one month if the applicant shows good cause.

Amendment of the priority date of the patent application is permissible in terms of Section 57 of the Act, only in relation to an application that exists in law

Section 11B(4) (Non Filing of Request for Examination result in deemed withdrawal), Rule 24B(1)(i) (Time limit for filing Request for Examination), Section 57 (Amendment of Application or specification before the controller).

In Nippon Steel Corporation v Union of India (W. P. (C) 801 of 2011;Delhi High Court) the patent agent of Nippon, it was alleged, on account of docketing error inadvertently missed the deadline to file a Request for Examination (RFE) for its patent application under PCT, claiming priority from a Japanese patent application dated February 9 2006.

As per the statutorily provided timeline, the RFE would have been filed by February 9 2010.

The agent then sought to amend the priority date of the application to the international filing date of the PCT application, February 9 2007. The idea was that by making this amendment the deadline for filing the RFE would become February 9, 2011.

But on February 1, 2011, the Patent Office informed the agent that the amendment in the priority date could not be effected as the application had become time-barred and due to non-filing of the RFE the application was deemed to be withdrawn under section 11-B (4) of the Indian Patent Act, 1970.

The applicant preferred a writ petition to quash the decision of the Patent Office and to take on record the application to amend the priority date.
In this case an interesting question of law came up involving provisions providing for adherence to the timeline in a request for examination (RFE). A RFE has to be made within 48 months from the date of priority or the date of the filing of the application, whichever is earlier [Rule 24B(1)(i) of the Patent Rules, 2003].

The Court dismissed the writ while finding it worthwhile to stress on the legislative intent behind the provisions, that the time limit to file an RFE under the Act and Rules is "mandatory" and not merely "directory". Since no RFE was filed before the expiry of the deadline the patent application stood withdrawn after February 9, 2010.

The court observed that while an applicant can seek to amend even the priority date of a patent application in terms of Section 57 of the Act, such request for amendment can be made only in relation to an application that exists in law.

Novartis Hearing Postponed

The Supreme Court of India on November 29, 2011 has postponed the  Novartis v. Union of India hearing citing over-running of another case involving the same judges. 

The case will now be heard on 28 February 2012. This is the third time the hearing has been rescheduled, it was initially listed for January 17, 2012.

Swiss pharmaceutical company Novartis has filed a Special Leave Petition in the Supreme Court challenging the decision of the Intellectual Property Appellate Board (IPAB), which rejected its appeal of the Novartis for a patent on the cancer drug, Glivec. The rejection was based on Section 3(d) of the Indian Patents Act, 1970, which prohibits patents on new forms of known substances, unless the new form exhibits a significant enhancement in efficacy, and  interpretation of  “efficacy” as “therapeutic efficacy”.

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