Patent

Is it lawful for Examiners to grant Patents under the Patents Act, 1970?


Earlier this year on the 3rd of August the Bombay High Court disposed a writ petition filed by one Bharat Bhogilal Patel, inventor who had been granted two patents by the Patent Office, Mumbai for the following inventions: (i) ‘A process of manufacturing engraved, design articles on metal or non-metal’ and (ii) ‘An improved engraving and marking machine with laser technology’. Apparently Mr. Patel had approached the Customs Commissioner to have his patent rights enforced under the IPR Enforcement Rules, 2007. It appears he requested the Customs Commissioner to seize all imports that allegedly infringed his patents.

Our frequent readers maybe aware of the infamous Ramkumar case last year wherein a small inventor had successfully enforced his patent rights under the IPR Enforcement Rules, 2007 to seize cellphone imports of huge companies like Micromax & Samsung on the grounds that they were violating his patents. Ultimately Customs Authorities released the consingments after it was sucessfully argued that Ramkumar’s patents were of dubious quality.

This time however the Commissioner of Customs has refused to enforce Bharat Bhogilal Patel’s dubious patents because of which he moved the Bombay High Court. The High Court disposed the writ once the Commissioner of Customs agreed to give Mr. Patel a formal hearing. The Order of the Bombay High Court can be accessed over here.

We managed to access the file wrappers of both patents. The first patent bearing application no: MUM/610/1998 was granted as patent no: 189207. The second application bearing no: MUM/611/1998 was granted as patent no: 188787. For all those of you who are interested in having a look at a pure Indian patent specification which cites zero prior art, we have loaded both file-wrappers on to our website – spicyip.com. It is also interesting to note the examination procedure itself wherein the examiner had to plead with the patentee to file the basic documentation such as title deeds etc. Please click on the following links to download the file-wrappers – Patent No: 189207 – Part I/Part II & Patent No. 188787.

Anyway getting to the main point of this post, I noticed that both patents were in fact granted by Patent Examiners on behalf of the Controller. Every letter from the patent office to the applicant/patentee, in both file wrappers, is signed by the Examiner on behalf of the Controller. This includes the letter informing the applicant that his patent has been in order for grant. Not a single communication from the Patent Office is signed by the Controller. I’ve seen this happening in other patents granted by the Patent Office, Mumbai. The two main issues that arise in this context are as follows:
Image from here.

I. Which is the authority that can grant a patent under the Patent Act?

As per the Patent Act, 1970 only the Controller of Patents can grant patents. This is understood from a joint reading of Section 14, 15, 16, 17, 18, 19, 20, 21, 25 & most importantly Section 43. All these Sections refer to only the Controller. The term Controller is defined in Section 2(2)(a) and Section 73 of the Patent Act, 1970. As per Section 73(2) the Controller General of Patents may appoint as many examiners and other officer and with such designations as it thinks fit. As per sub-clause 3 of the same provision, the Controller General of Patents may delegate his functions under the Act to such ‘officers’ who are appointed under sub-clause 2. The Controller General of Patents delegates his function through the issuance of Office Circulars. I’m guessing these officers are designated as ‘Deputy Controller of Patents, Joint Controller of Patents or Assistant Controller of Patents’.

Moreover as per the scheme of the Patent Act under Chapter IV, the examination and grant of patents is a two-tiered structure i.e. under Sections 12 and 13 it is the Examiner who examines the intial patent application for obviousness and anticipation before submitting a report of the same to the Controller under Section 14. After the Examiner submits the report to the Controller under Section 14 the Act vests the power to grant or deny a patent under Section 15, 42 etc. lies only with the Controller and not the Examiner. The fact that the Controller may have signed the Patent Certificates is insignificant in the overall analysis since as clarified by the Delhi High Court in the case of Dr. Snehalata v. Union of India a patent is effectively granted when the patent office communicated the same to the patentee through a letter. Therefore subsequent acts such as the patent certificate and the entry into the registry of patents are only administrative functions. The main decisions pertaining to the grant of a patent have already been communicated through the letters signed by the examiners.

II. Can the Controller further sub-delegate his power to an Examiner?

As per the correspondence in our custody it appears that the Examiners in both cases have signed on behalf of the Deputy/Asst. Controller of Patents. This would imply that the Deputy/Asst. Controller of Patents has sub-delegated his powers to the Examiners. The substantial question of law therefore is whether or not the Deputy/Asst. Controller of Patent can delegate powers which themselves have been delegated to him under Section 73 of the Patents Act, 1970. In my opinion such sub-delegation is illegal and will be dismissed by a Court of Law. I have outlined the reasons for the same below.

A fundamental maxim of administrative law is delegates non potest delegare. This basically means ‘one to whom power is delegated, cannot himself further delegate that power’. There are several Supreme Court precedents upholding this very fundamental principle.

In the leading case of Sahni Silk Mills (P) Ltd. And Anr. vs Employees’ State Insurance Corporation JT 1994 (5) SC 11, the Supreme Court, in pertinent part held the following:

By now it is almost settled that the legislature can permit any statutory authority to delegate its power to any other authority, of course, after the policy has been indicated in the statute itself within the framework of which such delegatee is to exercise the power. The real problem or the controversy arises when there is a sub-delegation. It is said that when Parliament has specifically appointed authority to discharge a function, it cannot be readily presumed that it had intended that its delegate should be free to empower another person or body to act in its place.

It is therefore implied that while delegation of powers under Section 73 by the Controller General of Patents is valid, the same cannot be further delegated by the designated controller to the examiner. Both patents therefore suffer from a gross error in law and should be set aside in case a writ petition is filed against them by the importers.

Most importantly however I would request the experienced patent practitioners to comment on whether examiners granting patents is a normal practise of the Indian Patent Office, in which case thousands of invalid patents may have been granted. A fit case for the Controller General to exercise his powers under Section 66 of the Patents Act?

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

10 comments.

  1. R S PRAVEEN RAJ

    Examiner puts up the file to the Controller. The file contains the report of the Examiner with a statement that the application is in order for grant and it may please be granted. If and when the Controller endorses, it implies that patent is granted.

    The question of sub-delegation doesn’t arise. Isn’t it ?

    Reply
  2. Prashant Reddy

    From what I have seen in a couple of file-wrappers the Controller has not signed a single scrap of paper in the entire file. The logical deduction therefore is that the Controller has not applied his mind to the grant of the patent. This is the manner in which even a High Court will assess the matter. If the Controller has applied his mind to the grant of the patent it has to be reflected somewhere in the file wrapper.

    Reply
  3. Kshitij Malhotra

    Examiner signing communications with the applicant is normal practice. I am not sure about the final order of grant.

    Moreover, I believe the controller can very well delegate its powers to examiners provided there is a general order or a specific order for the same. The delegation is not restricted to ‘Deputy Controller of Patents, Joint Controller of Patents or Assistant Controller of Patents’. At least a plain reading of section 73 (2) and (3) does not mandate such a restriction!

    Reply
  4. Prashant Reddy

    Hi Kshitij,

    Point well taken. However in this case none of the examiners had been designated Controllers. If they had been designated Controllers they would not have been signing off on behalf of Controllers. In each and every letter they have signed off on behalf of the Controller. This means they have conceded that they did not have the authority to sign it themselves. All that I am saying is that the Controller has no powers to further delegate his powers under the Act.

    Even presuming that my first argument is proven wrong the fact remains that the scheme of the Patents Act envisions a two-tier structure wherein an examiner and controller both have a look at the patent application. From the file wrappers before me it doesn’t appear that this has happened. If the Controller has applied his mind it has to be apparent on the face of the record which means his signature has to be present somewhere.

    Cheers,
    Prashant

    Reply
  5. Aliasgar Dholkawala

    I too have come across many such instances where the examiners have signed on behalf of Asst and Deputy Controllers. However things have changed now. I don’t see that happening any more after Mr.Khurian taking over as CG.

    Reply
  6. Kshitij Malhotra

    Dear Prashant,

    I acknowledge your point regarding the two-tier structure, and its applicability.

    In the file wrappers I have on my desktop, the examiners have signed communication/orders on behalf of Controller general of patents. However, I see that in the file wrapper of the instant case, the examiner has signed on behalf of Asst Controller. Now, is that a typographical error, or an erroneous practice will be better answered by inputs from patent office professionals on SpicyIP blog. I am sure there are few learned examiners and controllers following SpicyIP.

    Regards,
    Kshitij

    Reply
  7. Aliasgar

    Probably….I handle cases mainly with the Bombay office. Can’t comment on the other offices. I too found the practice puzzling but didn’t really made an issue out of it.

    Reply

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