Patent

Does there lie an Appeal from S.21 of the Patents Act?


First things first, SpicyIP wishes its readers (and others too) a Merry Christmas!

Is abandonment of an application under Section 21 of the Patents Act an appealable decision under Section 117A of the Act? This was the question that arose before the IPAB in Accenture Global Services GmBH and BT Group Inc v. Controller General of Patents. The facts of the case are as follows:

1. An application for a patent was filed at the Patent Office in Delhi claiming priority for a 2002 US application. Under Rule 24B of the Act, a request for examination (RFE) is to be filed within 48 months from the date of the priority or date of filing, whichever is earlier. Since the application in question claimed priority from a 2002 US application, the 48 month period is to be calculated from the 2002 US filing.

2. The applicant in this case duly filed an RFE within the stipulated period pursuant to which a First Examination Report (FER) was issued on 20.03.2006 under Rule 24B(3).

3. Sub-rule 4 of Rule 24B requires the applicant to set the application in order for grant within 12 months from the date of issue of the first FER, failing which, under Section 21, the application would be deemed to have been abandoned.

4. In the instant case, this means the applicant had a window of 12 months from 20.03.2006 to the set the application in order for grant i.e. on or before 20.03.2007.

5. A response to the FER was filed by the applicant on 16.03.2007. A second report was issued on 20.03.2007 and a response to the same was filed on the same day by the applicant. But since this was deemed to be beyond the 12 month period, the Controller communicated to the applicant vide communication dated 30.03.2007 that the application was deemed to have been abandoned under Section 21(1) of the Act.

6. The applicant filed an appeal under Section 117A of the Act claiming that the communication of the Controller would amount to a refusal to grant of a patent under Section 15 of the Act.

Maintainability of the appeal was the primary issue before the IPAB. The contention of the applicant/appellant was that the order of the Controller dated 30.03.2007 was passed without application of the mind and so the application ought to be remanded to the Controller to be decided afresh. Further, according to the appellant, the order of the Controller would amount to refusal under Section 15 and was hence appealable under Section 117A.

The IPAB held that Section 21 dealt with a situation where abandonment would be an automatic consequence of the applicant’s delay in putting the application in order for grant and therefore was not in the nature of a refusal as envisaged under Section 15.

On these grounds, the appeal under Section 117A was held as not maintainable. However, a few practitioners feel that a writ may lie before the High Court from the order communicating abandonment of the application.

The rest of this post has been added thanks to the comments which required one to play the devil’s advocate.

On one hand, one could argue that an order under Section 21 does not fall within the ambit of Section 15 since there is no discretion vested in or role to play by the Controller under section 21(1) in so far as the refusal or acceptance of the application is concerned. Stated otherwise, section 21(1) appears to speak of a mechanical abandonment in case of a delay and allows for extension of the 12 month period only under situations spelt out in sub-section 2 and 3. Therefore, an abandonment of the application under Section 21(1) may not be termed as an order issued under Section 15 of the Act.

However, before we foreclose the possibility of a counterview, let us read Section 15 which states thus:

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so”

To understand the scope of orders falling within Section 15 better, it helps to take a look at Section 117A(2) as well since orders issued under Section 15 are appealable under Section 117A(2). Barring Section 15, every other provision, an order from which is appealable under Section 117A(2), speaks of specific situations.

For instance, the order of the Controller issued under Section 18 refers to cases where the invention claimed in an application is anticipated under Section 13. Similarly, Section 19 talks about the power of the Controller in case of a potential infringement. Compared to such provisions, Section 15 does not restrict itself to any specific situation, which could mean that other than the specific grounds for refusal covered by other provisions mentioned in Section 117A(2), every other ground for refusal would broadly fall under Section 15.

Does Section 15 support such a conclusion? The relevant portion of Section 15 states “Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder”. Therefore, can one say that non-compliance of the time period prescribed under Section 21 (read with Rule 24B) and the consequent deemed abandonment could be considered as an order of refusal under Section 15? On the face of it, this doesn’t hold water because Section 15 requires the Controller to be satisfied of the compliance, which means room for use of discretion is necessary.

But, there could be two possibilities here; let’s take the instant case to understand the two situations. In the first situation, if the applicant’s response to the second report has not overcome the objections of the patent office and if the patent office is not satisfied with the response of the applicant within the 12 month period, then the time bar under Section 21 comes into play and neither the patent office nor the applicant can do anything about it, except may be file a writ.

However, the second hypothetical situation is when the Controller issues an order dated 18.03.2007 i.e. before the 12 month period, which wrongly states that the applicant is time barred under Section 21 (this is a remote possibility and pretty much academic). In such a situation, the Controller’s order would be defective on account of its misplaced conclusion of non-compliance of the Act. It seems probable that such an order may be in the nature of a refusal under Section 15 and hence appealable before the IPAB under Section 117A(2).

That said, in the instant case, since the applicant had filed the response to the second report within the time period, would it mean that he has put the application in order for grant? I don’t think so, because only when the response has been accepted by the patent office as having overcome its objections, it would be deemed as an application that has been put in order for grant of a patent.

We welcome the opinion of practitioners on this matter or the issues it raises.

8 comments.

  1. Avatarsagar

    May be irrelevant to this post and concerned issue, but just to ask….if applicant had a window of 12 months from 20.03.2006, then 12 months should end on 20.03.2007 OR 19.03.2007…..what is normal practice at patent offices regarding this.

    Thanks

    Reply
  2. AvatarSudhir Kumar

    If the FER was issued on 20th of March 2006 the Applicant has right to file a response till 20th of March 2007. In present case he did file it and filed it before that date. Now if the Patent office is issuing further Examination report on 20th of March 2007, it also implies they are treating the application alive on that date and if a response is filed and the complete specification was returned back (in case same was sent to Applicant or its Attorney) the Application could not be abandoned mechnically. This resort to Abandonment is taken by few Examiner as this spares them with giving reasons for refusing application and they used to deliberately hang case till last date and on last date they issue a Further Examination report and dispatch same along with CS to applicant virtually giving him no time to respond and return the CS.

    The blame is equally on the Attorney for Applicant, tehy should have discussed the case with Examiner (as was the prevalent practice that time) also they could have sought a hearing in event of any adverse observation by Examiner/ Controller. There is no appeal to Section 21 order and only remedy is writ to High Court under Extra ordinary juridiction and Court has passed very good orders in such cases.

    Reply
  3. AvatarJ. Sai Deepak

    Dear Sagar and Sudhir,
    Thanks for the comments, both of which are relevant and related. Sagar,in response to your question,my answer is that quite a few people who deal with patents day in and day out assume that 12 months under the Act refers to a year. But under the General Clauses Act, a month is defined as a month reckoned according to the British Calender. In a few cases, it has been held that a month is a period of 30 days.

    However Halsbury’s 3rd edition defines month as follows:

    “When the period prescribed is a calendar month running from any arbitrary date, the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts, save that, if the period starts at the end of a calendar month which contains more than next succeeding month, the period expires at the end of the later month”

    If this definition is accepted, this means that if the date starts on the 15th of January, then a month from this date would be the 14th of February, but if the date starts from 31st of January, it ends on 28th of February (or 29th if it is a leap year). So in the instant case, the date starts from the 20th of March, 2006. 12 months from this date would mean 8th of March, 2007 since with each passing month, we lose a day. But following is the definition of month from Halsbury’s 4th edition”

    “When the period prescribed is a calender month running from any arbitrary date the period expires upon the day in the succeeding month corresponding to the date upon which the period starts, save that, if the period starts at the end of a calender month which contains more days than the next succeeding month, the period expires at the end of that succeeding month”

    According to this, if the date starts on 20.03.2006, the date at the end of 12 months would be 20.03.2007 which is what Sudhir rightly states. Sudhir also raises pertinent questions, which I sum up as follows:
    1. If the last date for putting the application in order for grant is 20.03.2007 and the applicant has filed his response to the second report on 20th, can his application be considered as abandoned under Section 21?

    2. Assuming that the deadline was BEFORE 20.03.3007, would the issuance of a second report by the patent office mean that the application is considered as surviving? Is it within the power of the patent office to do such a thing?

    Sudhir’s observations on the patent office deliberately delaying the issuance of the second report may have an element of truth, but in this case when the FER was issued on 20.03.2006, the response to this was filed by the applicant only on 16.03.2007 leaving the applicant a very short period to file a response for a second report. I would say that the applicant ought to have left sufficient buffer period for filing a response in case a second report is issued.

    Also, Sudhir’s point on a writ remedy appears valid.

    Bests,
    Sai.

    Reply
  4. Avatarchitra

    i have a connected query….
    if we say the discretionary decisions of the controller are appleable as per sec 117 A r/w Section 15 of the patents Act… what about the controller’s order under rules 137 and 138? is it appealable?

    Reply
  5. AvatarReetika

    Hi, an Order under Section 21 is not appellable. It is open to review. But in practice, seldom does an Examiner/ Controller change his decision upon review. I recently dealt with this issue and filed a Writ before the Delhi High Court against such an arbitary order u/s 21. The Writ was allowed within 6 months. The issue is squarely covered by Justice Geeta Mittal’s judgment in Ferid Allani vs. UOI.

    Reply
  6. AvatarJ. Sai Deepak

    Hi Chitra,
    The intention behind Section 15 appears to be to prevent unreasonable refusal of patent grant by the Controller. So
    (1)if the applicant does not comply with time period under any rule or section of the Act and

    (2) seeks extension of time or condonation of irregularities under Rules 137 and 138 and

    (3) if the rejection of extension of time results in refusal of the patent grant

    (4) then it may be appealable under the Section 15/117A combo.

    In short, the use of the Controller’s discretion must result in refusal of the patent application for it to be appealable under Section 15/117A. Mere rejection of an application under Rules 137 and 138 may not be appealable.I must however admit that this is a tentative reply.

    Bests,
    Sai.

    Reply
  7. AvatarJ. Sai Deepak

    Thanks Reetika,
    I didnt realise that the decision you cite has already been discussed on the blog. I should have checked it before I discussed Section 21. But thanks anyways, i think it settles the issue.

    Bests,
    Sai.

    Reply
  8. AvatarSudhir Kumar

    Dear Chitra/ Deepak,

    If Controller’s exercise of discretionary power is likely to affect adversely applicant or any party to a proceedings, the Controller is bound to give a hearing with at least a 10 days notice. Further the Controller is bound to give a hearing to Applicant where such discretion is adverse to applicant.

    But where such power is exercised favourably for extention of time it can not be challenged by any other party or no notice is required to be issued in such case to any other intereste party.

    Reply

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