Section 21 stipulates that after receiving objections via the first examination report from the patent office, an applicant has about a year (12 months) to put his/her application in order. So if X receives the FER on 1 Jan 2008, then X has time till 1 Jan 2009 to address the objections and put the application in order. If X does not do so, then section 21 enables the patent office to deem the patent application as “abandoned”.
What the office typically did was that after they received responses from the patent applicant to the FER (lets say in Nov 2008), they would issue another set of objections (lets say on Dec 25, 2008) and ask the applicant to respond by Jan 1, 2009. A nearly impossible task for most applicants–given the short window. In fact, in some cases, including the one that Shwetashree took to court, the second examination report (SER?) reached the patent applicant well after Jan 1, 2009! Since there was no response, the patent office deemed this application as abandoned.
Little wonder then that Justice Mittal sharply castigated the patent office for such a heavy handed practice. Needless to state, her order means that the patent office cannot now take the easy way out and “deem” applications to be abandoned (a term that signifies that the patent applicant has altogether lost interest in his/her patent application) BUT that it would have to necessarily give reasons for rejecting the patent application (if it does indeed decide to reject it).
For SpicyIP, this means a quantum leap in transparency and is therefore an extremely welcome judgment.
Anyway, here is Shwetasree’s post reviewing Justice Gita Mittal’s order in Ferid Allani v. Union of India WP (Civil) No. 6836 of 2006.
A judgment of the Delhi High Court on the issue of the patent office practice and procedures earlier this year, brings into sharp focus an issue that had for long been the bane of patent applicants, S. 21 of the Act.
A provision enacted to govern the time period for putting an application in order for grant, S. 21 has undergone changes with each of the patent amendments (1999, 2002 and most recently, in 2005) . Since Ferid Allani vs UOI dealt with a pre 2005 patent application, this note discuss section 21 and accompanying rules as it prevailed prior to the 2005 amendments.
I reproduce two versions of section 21 below (pre 2002 and post 2002 amendments):
Old Provision (1970 Act: pre 2002 amendments)
21(1). An application for a patent shall be deemed to have been abandoned unless within fifteen months from the date on which the first statement of objections to the application or complete specification is forwarded by the Controller to the applicant or within such longer period as may be allowed under the following provisions of this section 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.
New Provision (1970 Patents Act, as amended by 2002 amendments)
21(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.
While the allowable time period for putting an application in order for grant and the discretionary powers of the Controller in the said regard have changed with each amendment, what has remained consistent is the fact that the Act at best prescribes the timeline for responding to the First Examination Report alone.
It is however common practice for the Patent Office to issue second and third examination reports, and in the absence of a specific provision to govern the time lines for their response, the Patent Office typically treats the time line for the First Examination Report as the non-collapsible time line for putting the application in order for grant as a whole. Thus, the eighteen month period under S. 21 (as it stood in 1999) which reads simply as “time prescribed” under the amended S. 21 (in 2002), and which was understood to mean to six months (extendible by a further three months) under Rule 24B (i) and (ii) of the Act and Rules as it stood then is the only time afforded by the Patent Office for putting the application in order for grant even though second or third examination reports are often issued by them a day or so prior to the expiry of the period.
(This period has now become 12 months under the 2005 amendments. However, it ought to be remembered that this case involved a pre 2005 application and therefore the legal position considered is the one that prevailed prior to 2005).
In any event, changed timelines notwithstanding an applicant would often not be able to file their response to second, third and subsequent examination reports on time and their application would be deemed by the Patent Office to be abandoned, despite every intention on the applicant’s part to pursue the application.
One such set of facts which led to an utterly ridiculous abandonment were challenged before the Delhi High Court in a writ petition titled Ferid Allani v. Union of India WP (Civil) No. 6836 of 2006. The facts were thus:
• Indian patent application no. IN/PLT/2002/00705/DEL was submitted on 17th July 2002.
• A request for its examination was submitted on 19th November 2004
• The First Examination Report was issued on 21st February 2005
• According to Rule 24B (i) the time prescribed for putting the application in order for grant after receipt of the first statement of objections would expire on 21st August 2005.
• Under Rule 24B (4) (ii) an extension could be granted for a further period of three months for putting the application in order for grant, provided the request was filed 1 month prior to the expiry of the six month period.
• A request was accordingly filed on 15th July 2005 for a one month extension which was accordingly granted upto 21st September 2005.
• The reply was filed on 17th September 2005 (which the Patent Office disputes and says that it was received only on the 19th of September 2005. In any event it is not in dispute that the reply was within time).
• On 21st September 2005, the last day of the one-month period, a second examination report was issued by the Patent Office which reached the petitioner by post on the 24th of September 2005 and which necessitated that the response to it be filed by the 21st of September 2005, failing which the application would be deemed to be abandoned!
• Needless to say, the petitioner, could not, upon receipt of the second examination report on the 24th, possibly reply to it by the 21st, and his application was abandoned.
The circumstances of this abandonment were challenged in a writ petition, which was allowed by Justice Gita Mittal in a detailed order dated 25th February 2008.
The key submissions made by the petitioner were that:
1. The ‘time prescribed’ in Rule 24 B (i) and (ii) only relates to the First Examination Report so the statute is essentially silent on the time period for putting an application in order for grant pursuant to subsequent examination reports.
2. In any case the Rule in question must be interpreted as directory and not mandatory in as much as the procedural norm cannot be used to defeat the applicant’s substantive rights.
3. That abandonment cannot be presumed by a construction of the statute to the applicant’s prejudice, when his express conduct has exhibited his categorical wish to pursue the application.
4. That both the proscriptions of the statute and principles of natural justice have been ignored in that no hearing has been held under Section 14 of the Act.
5. A similar view was taken in the context of the Trademarks Act, 1999, by the High Court of Gujarat in Wyeth Holdings Corpn. & Anr. Vs. Controller General of Patents, Designs and Trade Marks [2007 (34) PTC 1 (Guj)]. The Court noted that Rule 50(1) of the Rules did state that Evidence in Support of Opposition had to be filed within two months of the receipt of the Counter Statement extendible by one month and further, that Rule 50(2) provided that if Rule 50(1) was not complied with, the opposition shall be deemed abandoned. However, keeping in mind Section 131 of the Act, which confers an unambiguous discretionary power on the Registrar and the principle of ‘harmonious construction (provisions in subordinate legislation – the Rules – have to be in conformity with provisions of principal legislation – the Act)’, the Court declared sub-rule (2) of Rule 50 as ‘directory’ and not mandatory and the Registrar could, thus, permit a further extension of time.
6. That even if the statutory period was to be considered sacrosanct, under Rule 24 B (4) (ii) the maximum extension available was ‘three months’. The applicant had sought only a one month extension to respond to the objections in the First Examination Report as he could not have reasonably foreseen that there would be a second report. Therefore it was open to the Controller to suo moto invoke the remaining two months of the petitioner’s statutory entitlement and at least grant him the said period to respond to the second report, rather than unilaterally abandon the patent application.
In a lucid order which has immediately impacted the patent office practice in relation to Section 21, Justice Gita Mittal allowed the writ for the following key reasons:
• That the rule of deemed abandonment is one which has the effect of denying valuable substantive rights to an applicant not only for the reason that his patent application will effectively stand rejected, but also since an order under Section 21 is not an appealable order, unlike an order of rejection on merits under Section 15, which can be the subject matter of an appeal.
• Under the statutory scheme there is no mechanism by which the second examination report is made, served, dealt with or heard and if one were to go by the strict prescription of time lines for issuance of examination reports under Section 12 of the Act (three months) then the second report would require to be rejected. The respondents’ interpretation of the statute is such that there is no provision for a second set of objections. But it certainly cannot be so as the rule of harmonious interpretation of the statutory provisions should not be such that it results in an absurdity.
• Under Section 14 of the Act, the Controller is required to communicate the gist of the objections to the applicant and call for a hearing, which has not been complied with. The Controller’s act is therefore illegal and also against the principles of natural justice.
• Parallels with various other statutes and procedural laws (like the CPC) on the issue of adherence to prescribed time periods show that the courts have uniformly been of the view that rules of procedure are directory in nature and cannot override substantive rights as ‘procedure is the hand maiden of justice’.
• New and substantive objections such as those under 3 (k) needed proper response time (pursuant to consultation between the counsel and the client) and in the absence of the same, or the absence of a hearing under section 14 together with the Controller’s unwillingness to grant the further period of two months that the petitioner was entitled to, even under the statute, and simply rejecting the application as ‘abandoned’ was unjustified and unwarranted.
• Even otherwise Rule 138 (as it then stood) permitted the Controller to extend the time prescribed under Section 21 read with Rule 24 B of the statute.
This continues to be the unchallenged and unequivocal position across IP legislations even as of the present date as this judgement has not been appealed against. The only change in the law is that Rule 138 now contains an express exception in the form of Section 21, i.e. it permits the Controller to extend the time prescribed under various provisions of the statute but not in the context of Section 21.
However, in my opinion, that still does not change the position that Section 21 at best pertains only to the timelines in relation to the first examination report. If a second examination report is issued thereafter, the issuance of which, itself is not prescribed by the statute (See Section 12 and the timeline for issuance of first examination reports prescribed therein – the second report is always issued after the expiry of the said timelines) it is unjustifiable to allege that the time period to respond to the same will not run afresh and will cease when the time period to respond to the first report ceases. In other words although the Controller does not, any longer, have the power to extend the time prescribed for responding to the first report, under Section 21, he should not only set a timeline for responding to the second but also call for a hearing before passing any adverse order against the petitioner in compliance of his statutory obligations, as an abandonment per se without a hearing is against natural justice.
By: Shwetasree Majumder
Fidus Law Chambers
Email: shwetasree at fiduslawchambers.com