"Abandoning" Legal Fogginess: A Proposal for Patent Clarity

So speaks an entry in the famous Webster’s dictionary. Or for that matter, any other dictionary. Perhaps a genre of books that the Indian Patent Office (IPO) actively shies away from. How else might one explain the fact that patent applications that are passionately prosecuted by keen applicants end up being speciously branded as “abandoned” under the infamous Section 21?

Shwetashree did a guest post for us on this aspect, analysing an important order in Ferid Allani, where Justice Gita Mittal of the Delhi High Court came down heavily on the IPO for such a practice. While introducing Shwetashree’s guest post, I had stated:

“Section 21 stipulates that after receiving objections via the first examination report (FER) 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 specious 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).”

The Shell Order

In a later case involving the petrochemical major, Shell International, Justice Sistani ruled on similar lines and asked the Patent Office to hear the applicant before passing any adverse order. Unfortunately, my favourite Indian legal database, Indiakanoon, does not have a copy of this order, the particulars of which are:

Shell International Research vs UOI and Ors (WP (C) No 6721/2007): Order by Sistani J dated 19/09/2008.

More recently, Sai Deepak reviewed an IPAB order categorically holding that an order of abandonment under Section 21 is not appealable to the IPAB.

One might argue that the Indian Patent Office (IPO) is not fully to blame, as it is constrained by the wordings of the Patents Act and the rules. However, there is some wiggle room in Section 21 and the IPO ought to leverage this wiggle room to craft a sensible and fair solution.

A Proposal

Section 21 (and the pertinent rules thereto) suggests that the entire process of prosecution (starting with the issuance of a first examination report and ending with the applicant taking care of objections and putting the application in order for grant) must be completed within one year (12 months). It is important to note that section 21 and the time frame envisaged therein is not necessarily limited to the first examination report (and a response thereto), but to all possible communications that are to flow between the patent applicant and the office during the course of prosecution. In other words, not just the first examination report and its response, but also the second examination report, the third etc and responses thereto are to be included.

However, while maintaining the outer limit of 12 months, the IPO is to ensure that the patent applicant gets a reasonable time to respond to each one of its reports or office actions. Consider a scheme on the below lines:

The IPO issues an FER on Jan 1, 2010. It then gives four months to the applicant to respond i.e. by June 1, 2010. The IPO requires more clarifications and issues another report on August 1, 2010. It then gives the applicant another 2 months to respond i.e. by October 1, 2010. The IPO issues yet another report on November 1, 2010. And asks the applicant to respond by Jan 1, 2011. If the IPO remains dissatisfied with the response and is skeptical of the merits of the application, it ought to reject the application under section 15 (after offering the possibility of a hearing to the applicant, where necessary).

Is this scheme likely to work? Note that the entire process is completed within the maximum cap of 12 months as mandated by Section 21 and the rules (Rule 24B). The time lines may appear tight, but one could reduce the quantum of communications between the applicant and the IPO. Illustratively, one might mandate that the IPO take all its substantive objections at one shot in the first examination report (FER). It should use the second report (and other subsequent reports) only as a means of gaining further clarity on the applicants’ response to the FER and not as a guise to issue fresh substantive objections.

One might also consider amending Rule 24 (B) that stipulates 12 months as the maximal upper limit to put an application in order. One could increase this time limit to 15 or 18 or even 24 months. After all, since Rule 24 (B) is a mere “rule” (that was framed by the government) and not a provision in the main text of the statute, the government could easily change this, without the waiting for Parliament to step in and amend the statute.

Before I sign off, let me wish all our readers a wonderful New Year. But before you bring in the New Year with your poison of choice, do mull on the above proposal and come back with your thoughts, this year…or the next.

ps: For those that wish to get a sense of the term “abandonment” without necessarily resorting to dictionaries, there are plenty of Hollywood flicks centred on this theme, including one to be released next year starring the dear departed, Brittany Murphy.