Sanctity of Section 21


In the last post, Mr.Basheer has proposed a new way of dealing with the anomalies in practice when it comes to applying Section 21 of the Patents Act. The general opinion among patent practitioners is that the provision is used to unfairly get an applicant to “abandon” his application since there is no time limit on how long the patent office can sit on the application without responding to the applicant.

It appears that there is something else interesting as well; under Section 14 of the Act, if the examination report is adverse to the applicant, then before the disposal of the application, the applicant may make a representation for a hearing.

It must be noted that the representation must be made within the prescribed period, which is 12 months under Rule 24B. So typically these days most practitioners forward such a representation along with their response to the examiner’s report.

Turns out that, not infrequently, the patent office gives a date of hearing which is after the prescribed 12 month period. Is this permissible is the question. Can there be a hearing under Section 14 after the prescribed period?

Some may say that Section 14 stipulates a time period for the applicant to make his representation, but does not give a timeline for the hearing by the patent office and so the patent office is justified in giving a date after the 12 month period.

My answer is, Section 14 need not set a timeline for the patent office because it is already provided for in Section 21.

A plain reading of Section 21 tells us that the 12 month period is to be observed strictly and the only instances where it may be extended are spelt out under sub-section 2 and 3. Sub-Section 2 provides that, at the end of the 12 month period if there is a pending appeal of the applicant filed before the High Court, then the 12 month period may be extended to a date that the High Court may determine.

Sub-section 3 of Section 21 and its proviso read thus:

If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine:

Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court

Does this sub-section refer to an extension given by the Controller to file the appeal spoken of under sub-section (2) or, does it generally refer to an extension from the 12 month period in case the applicant has not been able to file his response to the report? Since the sub-section refers to the time period within which the appeal may be instituted, it means the former.

For instance, if the time period for filing an appeal referred to in sub-section (2) starts just before the end of the 12 month period, then the applicant would naturally need an extension of the 12 month period so that he may file such an appeal, without having to worry about a deemed abandonment of his patent application under Section 21. However, sub-section (3) does not state if this is to be only at the representation by the applicant or suo motu.

If this be the case, it could be said that unless there is an extension of the 12 month period under sub-sections 2 or 3 of Section 21, the hearing under Section 14 too must be held only within the 12 month period.

The bottom line is that Section 21 applies with equal rigour to the applicant and the patent office. So no act of the patent office should have the effect of derogating from the period prescribed in Section 21.


9 comments.

  1. AvatarAshwani

    Dear Sai,

    I agree with your interpretation of the section regarding the extension of time. In normal circumstances (not involving any appeal), the statute requires that the matter must be finalized and the Controller should give his final decision within 12 months from the issuance of the FER. Irrespective of the number of correspondences and hearings, the decision should come in 12 months.
    However, as usual, the practice is justifiably far away from the theoretical (statutory) requirements. It can be easily ascertained from a plain reading of Rule 24B, that the time given to the applicant for putting the application in order of grant after receiving the FER is 12 months. Therefore, if the applicant files the response to FER after 11 Months and 15 days (which is allowed under the statute) and along-with the response also requests the controller for a hearing (which has to be requested atleast 10 days before), how can we expect that the Controller will review the Response to FER, send his own reply to the applicant, arrange for a hearing and gives a final decision within 15 days. It is practically not possible. Further, considering the backlog of pending patent applications at the Indian Patent Office, this is not possible even if the Applicant files his response to FER within 1-2 months and the process moves as expeditious as possible as per the Indian standards. Thus I feel that the practice justifiably deviates from the statute.
    Therefore, I think that in order to streamline the statutory requirements and the practice followed, the statute must provide a time period between the final date of submission of Response to FER and the date by which Controller should make his final decision.

    Best Regards,
    Ashwani

    Reply
  2. AvatarJ. Sai Deepak

    Dear Ashwani,
    I agree with you completely. I think what i am trying to convey is that even Section 14 needs to be factored when we think of a revamp of the time period. The only thing that rankles me is arbitrary application of the present time period to suit someone’s convenience. I also realize that sometimes such arbitrary practice may work to the benefit of the applicant. But rule of law cannot be given a go by and if the current timeline isn’t practical, then, as Mr.Basheer suggests, we might as well promote a new one.

    Bests,
    Sai.

    Reply
  3. AvatarAshwani

    I would like to clarify a very important point in my earlier comment. I stated that the 12 month period is there for controller to give his final decision. However, this should not be misunderstood as any kind of compulsion on the controller to give his decision within 12 months of issuance of FER. Statutorily, the time period limitation is applicable only to the Applicant for complying with the objections and put the application in order for grant.
    Therefore, in order to comply with this statutory requirement in practice, there is no further WRITTEN correspondence between the Controller (or Examiner on his behalf) and the Applicant after the 12 months period. Although, this process of making objections (by examiner) and there compliance (by applicant) is carried out during hearings rather than written statements. However, it must be noted that the applicant is still in the process of complying with the objections and putting the application in order of grant. But, as Sai rightly pointed out that there is no limitation of time regarding setting up the hearing and a final order of controller, the time period limitation of 12 months is easily bypassed in practice by the means of hearing. And in such case untill the controller finally rejects or accepts the application, the application is deemed to be in process of being complied against the objections and statutory requirements because the applicant has to amend (although not always) the application in response to Controller’s comments during hearing. Therefore, if the ‘hearing’ is construed as part of the normal examination and any subsequent amendments made in the application during hearing, then certainly there is some ambiguity in statute which could be considered for more clarification.

    Best Regards,
    Ashwani

    Reply
  4. AvatarJ. Sai Deepak

    Dear Ashwani,
    I think that’s a very good point about ambiguity. But let me rephrase the questions in an attempt to reduce, if not eliminate, ambiguity altogether:

    1. Section 21 does not seem to specify that putting the application in order for grant has to necessarily be construed as being through written correspondence. If so, can we not deem it to include the hearing as well?

    2. True, Section 21 does not require the Controller to give his decision within or rather at the end of 12 months. But since it speaks of deemed abandonment of the application, how do we justify the conclusion that the Controller has been given the power to accept the application beyond such period notwithstanding whenever he issues the decision? In other words, the central issue is, if Section 21 deems the application as abandoned beyond the prescribed period, can the Controller give a decision to the contrary? If yes, which specific provision empowers him with the authority to override the deemed abandonment under Section 21?

    3. Further, in light of judgments which speaks of strict compliance of Section 21 (Ferrid Allani v. UOI and the recent IPAB decision in the Accenture case), wouldnt we need stronger grounds and statutory support to substantiate the practice of giving a hearing beyond the 12 month period thereby rendering nugatory Section 21?

    Bests,
    Sai.

    Reply
  5. AvatarAnonymous

    TO avoid the conflicts between sectin 14 and 21 patent office did had a section which makes it mandatory to file the reply statement to FER within 4 months as is done EP. however it was misused most of the time as in form of reply only the formal objection were met. No indication with respect to the technical objection raised. The sectin was objected by the agent stating that it is difficult to get reply within 4 month from applicant especially those who are outside India. And in subsequent amendment the section was removed. The patent office do try to maintain the examintion pprocess as breif as possible but even if the hearing is scheduled before the last date chances are that it will be postponed by the applicant stating some reason. In case the hearing is done well before the last date the amendment is done in daily basis even after the complete clarification to the objection raised to refuse the application is made. This makes it very crumblesome as the hearing for applicant is then carried daily basis as the applicant is unwillling to reduce the scope of the claim till the last date is approach. This makes the mockery of the hearing which is suppose to be final say for the controller to applicant to meet the requirement. The whole article by Mr. SAi makes the PAtent Office as villain unwillingly to do their work. But in most circumstances the delay is usually by the applicant. The patent practioner are definately unhappy with sectin 21 as they have to finish the application in 12 months which might be huge financial loss for the lawyer. There was a case filed by patent practitioner against the patent office for not giving hearing to them with related to the application which was received by the patent office on the last day/week. SO the sectin 21 should be rigour so that no act of the patent practioner have the effect of derogating fromt he period prescribed in section 21. I think Mr. Sai is not a regular patent agent like the other writer and hence wrote the article. I will interesting to see Mr. Sai’ reaction to the same once he starts practicing as patent agent.

    Reply
  6. AvatarJ. Sai Deepak

    Dear Anon:
    Thanks for the comment. I have to clarify that the idea behind the post was to convey the importance and import of Section 21, but not to vilify the patent office. In fact, if you read my last post on Section 21 (http://spicyipindia.blogspot.com/2009/12/does-there-lie-appeal-from-s21-of.html), I have clearly suggested in the comments that delay on part of the patent office is just one side of the coin because applicants or rather their agents too delay filing responses.
    I have said thus:
    “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.”

    So I dont think I harbour any kind of malice towards any individual or entity, our approach on SpicyIP is always issue and merit based.

    There is absolutely no denying the fact that the patent office alone cannot be held responsible.

    Coming to the issue of my reactions, in the limited period of time that I have been in practice, I have kept my antennae alive to mistakes by both applicants and the patent office. More importantly, the broad purpose of these posts is to put questions, the answers to which are not based on consensus but on strong statutory grounds. So even if I come across as the villain in the process of bringing about clarity, that’s a risk I am willing to assume because it does seem that some of us don’t react unless nudged to the corner 🙂

    Warm Regards,
    Sai.

    Reply
  7. AvatarJ. Sai Deepak

    I think Rule 138 also makes it clear that the power to extend the prescribed time period may be exercised by the Controller only in instances OTHER THAN the ones in Rule 24B, 55(4) and 80(1A). Rule 24B lays down the 12 month period…

    Bests,
    Sai.

    Reply
  8. AvatarShamnad Basheer

    Dear Sai,

    I think you’re absolutely right that the section 14 hearing must fall within the time limit prescribed under section 21. The idea behind the hearing is to give the applicant an opportunity to explain his/her stand better….a stand that the patent office may have overlooked. This being the case, it is possible that the patent office issue further instructions (to amend the patent specfn etc) to the applicant so that the application may be put in order for grant. And this time given to put in order for grant also ought to fall within the 12 month period. And this is precisely why it is critical that the rules be amended to provide a greater time line than the existing 12 months. we need at least 15-18 months here! And further time periods provided within each letter issued by the patent office (EP practice of 3-4 months each).

    However the ultimate decision by the patent office on whether to grant or not does not need to be made in 12 months. For there is no support for that proposition from the Act.

    Reply
  9. AvatarJ. Sai Deepak

    Dear Sir,
    True Sir, this is what I stated in my last comment to Ashwani as well.There cannot be any time limit on when the Controller has to give his decision because Section 43 of the Act states that where an application for a patent is found in order for grant, the patent shall be granted as expeditiously as possible. So it does not set a specific deadline for grant.

    On amendment of the timeline for examination, I completely concur with you. During the last amendment to the Act, if i am not wrong, a period of 12 months was suggested to ensure that a patent application does not remain with the examiner for more than the 12 month period. But given the practical hurdles, we will need a revamp along with an increased hiring of examiners. In 2007-08, 35,218 patent applications were filed and if one assumes that there are 200 examiners solely dedicated for patents, that would bring the number of applications per examiner to 176. But examiners have to work on pending applications from previous years as well, so the number of applications per examiner is certainly more than 176.

    Compared to this figure, in 2007-08, approximately 4,85,312 applications were filed in the USPTO and they had over 6000 examiners, bringing the number of applications per examiner to about 80. So even if the number of applications per examiner in the US is more than 80 considering pending applications, it is clear that the Indian office is under-staffed (and I am not sure of the quality of infrastructure, docketing etc available to Indian examiners). I think given these figures, our examiners are doing a fairly decent job. An amendment to the timeline would help them too and it will certainly reflect in the quality of examinations and naturally on frequency of oppositions.

    Sincerely,
    Sai.

    Reply

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