In 2 earlier posts, I had discussed the Delhi High Court’s judgment on maintainability of pre-grant decision appeals before the IPAB. In those 2 posts, the focal point was to underline the fact that the rejection of a patent application in a pre-grant opposition (let’s call this “PGO” rejection for short) is no different from its rejection under Section 15 of the Patents Act, 1970 in the normal course of examination.
Before the pronouncement of this judgment, I was searching for judicial guidance in understanding the scope of Section 15 and fortunately, I came across this 1999 decision of the Calcutta High Court in Danieli A C Officine Maccaniche SPA v. Controller of Patents. Although, even in the absence of this decision, one doesn’t need a lot of convincing to understand the said provision, it is important to have precedents to convince those who may not be as familiar as practitioners with the structure of the Act and the flow of patent prosecution process.
Before I discuss this 7-page decision, it is important to understand why is this decision relevant. Thus far, the stand of the IPAB in PGO rejections of patents has been that the order of rejection was one given under Section 25(1), and not Section 15. Consequently, according to the IPAB, since Section 25(1) did not find mention in Section 117A, which speaks of IPAB Appeals, the order of rejection in a PGO was not appealable before the IPAB.
In light of this specific objection to maintainability, the decision of the Calcutta High Court helps us understand the scope of Section 15. This decision was passed at a time (before the 2005 Amendment Act), when appeals were governed by Section 116 of the Act and IPAB had not yet been notified to take up patent appeals. Section 116, as it existed then, is as follows:
Section 116 (Before 2005 amendment): Appeals:
(2) Save as otherwise expressly provided in sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, section 15, section 16, section 17, section 18, section 19, section 20,section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, sub-section (3) of section 69, section 78, section 84, section 86, section 88(3), section 89, section 93, section 96 and section 97.
The Appellant in this case was a patent applicant who had earlier filed for a patent grant in Italy on March 31, 1994. Italy had been declared a convention country vis-a-vis India on January 3, 1995. A corresponding Indian patent application was filed under Sections 133 and 135 of the Act on March 15, 1995 which claimed the benefit of priority from the Italian application. Office action dated December 10, 1997 was issued by the Controller asking the applicant to rectify certain defects in the application.
The Controller’s objection to the application was that it could not be treated as a convention application since it was filed before Italy was declared a convention country. He dismissed the application, observing however that if the applicant applied as an ordinary applicant, the application would proceed.
The applicant filed an appeal before the Calcutta High Court (since the IPAB hadn’t come into being). The first issue before the Court was if the order of rejection of application was appealable as a decision given under Section 15.
The respondent i.e. the Controller contended that the order was one under Sections 133 and 135 of the Act, and not under Section 15. To this the Court categorically held that the Controller’s argument was unacceptable, since these provisions were merely relied upon to reject the application, and such order must be deemed as an order given under Section 15.
This is abundantly clear from Section 15 which gives the Controller power to reject applications, if in his opinion, any requirement of the Act has not been complied with. Although any non-compliance with any requirement would necessarily have to be related to a relevant provision of the Act, such as Section 133 in this case, the refusal of the patent application itself would be one under Section 15.
On these grounds, the Court held the appeal maintainable. From 2005 on, these appeals have been transferred to the IPAB under Section 117G.
As I had stated in my last post, “A provision of appeal from an order of refusal under Section 15 has been provided in Section 117A to provide the applicant with a forum which has the authority to reverse any unreasonable order of the Controller which violates principles of natural justice or which reflects non-application of mind by the Controller or which contravenes the provisions of the Act.”
One may ask, what else would lie within the scope of Section 15. Off the cuff, an order of refusal of the application for non-compliance with requirements for International applications spelt out in Rule 20 read with Rule 22 too would be an order under Section 15. There could be several such instances, which in my opinion, is how Section 15 has to be construed.
We welcome the opinion of our well-informed readers on the interpretation of this provision.
