Patent

Patent Office achieves ‘gold standard’, demands Rs. 104,000 to deliver certified copies of 26 documents!!!!


In an absolutely mind-blowing case before Justice Murlidhar of the Delhi High Court a petitioner, presumably a defendant in a patent case, seems to have taken serious objection to the sky-high fees, of Rs 104,000 being charged by the Patent Office for the supply of certified copies of 26 documents of a patent file. Unless the Patent Office is delivering these certified copies on gold-laminated paper, in gold plated envelopes I’m guessing a more reasonable estimate would a 4 digit figure and not a 6 digit figure. Apparently the petitioners in the present case have handed over a note to the Court and the Patent Office on a more appropriate figure for certified copies. We’ll try and get a copy of the same.
A certified copy is basically any document on a public record which has been certified under the seal of a public servant as being a true copy of the official record. A certified copy is presumed to be genuine under Section 79 of the Evidence Act, 1872. Section 147 of the Patents Act also makes it abundantly clear that no Controller shall be compelled to testify before a Court of Law when the facts that are sought to be proved can be proved through a certified copy of the official record. Certified copies are vital during a trial as normal photocopies of the patent office record are not admissible.

In the present case it appears that the petitioner had applied for certain certified copies of 26 documents related to the same patent and the Patent Office is apparently charging Rs. 4000 per document which cumulatively runs into Rs. 104,000 ONLY.

The Petitioner on the other hand claims that the cost should be calculated at Rs. 4000 towards a certified copy plus Rs. 4 per page i.e. (Rs. 4000 + (4x 26 documents). The fee schedule of the patent office on its website does indicate Rs. 4000 for a certified copy but it does not give the broad classification i.e. if a company were to apply for a certified copy of an entire file wrapper would the Patent Office charge Rs. 4000 as processing fee for the entire file wrapper or would it charge Rs. 4000 per component of the file wrapper i.e. patent certificate, i.e. register of patents, specification, Form 7, Form 27 etc.

In order to put things in better perspective I urge you to check out the fee schedule of the patent office that is available over here on their website. To file a patent application it costs Rs. 4000. But if you want certified copies of the same, its just priceless……………even Mastercard couldn’t get you the same!!!

I just hope that the Patent Offices picks up some lessons from the Ministry of Company Affairs which, under its ambitious MCA 21 e-governance program, allows citizens to apply for certified copies of any of its records through the internet after paying through a credit or debit card. This in effect cuts out the middleman. In the case of the Patent Office most companies apply through a patent agent or firm which in turn will charge a hefty sum. A troubled litigant once related to me a story of how he wanted to get out certified copies of three different documents, one page each, from the patent office. First the patent office extracted Rs. 4000 per page which means Rs. 12,000 right there plus the patent firm’s costs of Rs. 6000 per application to the patent office for certified copies i.e. 6000 x 3 = Rs. 18,000. Additionally the lawyer who made the referral to the patent agent charged an extra fee for his services. The total therefore is Rs. 30,000 for three pages i.e. Rs. 10,000 per page!!!! True story!

In any case, with no further delay, I paste below, for your viewing pleasure, the Interim Order of Justice Murlidhar,:
IN THE HIGH COURT OF DELHI AT NEW DELHI W.P.(C) 5480/2010
POLYMEDICURE LTD ….. Petitioner
Through: Mr. Maninder Singh, Senior Advocate with Mr. Vaibhav Vutts, Advocate.
versus
UOI and ORS ….. Respondents
Through: Mr. Neeraj Chaudhary, CGSC with Mr. Khalid Arshad, Advocate for UOI.

CORAM: JUSTICE S. MURALIDHAR
O R D E R 09.09.2010
1. Mr. Chaudhary states that there are 26 documents and as per the understanding of the Office of the Controller of Patents the Petitioner has to pay ` 4,000/- for a certified copy of each such document. The amount to be paid works out to 1,04,000/-.
2. Mr. Maninder Singh points out that the Petitioner has already deposited sum of ` 4,000/- towards processing charges, and that the Petitioner is, without prejudice to its rights and contentions that it should be asked to pay only ` 4/- per page, willing to deposit in this Court a sum of ` 1,10,000/-.
3. It is directed that the Petitioner will deposit in this Court a sum of 1,10,000/- which will be kept in a fixed deposit by the Registry initially for a period of 91 days and be kept renewed thereafter till further orders. The certified copies of the entire record of the patent in question (for which an application had been filed by the Petitioner with the Respondent) will be supplied to the Petitioner, subject to such deposit, within one week from today.
4. Mr. Chaudhary states that pre-grant opposition has not yet been traced but the efforts are on.
5. List on 14th December 2010.
6. Order be given dasti under the signature of the Court Master.
S. MURALIDHAR, J
SEPTEMBER 09, 2010

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).

12 comments.

  1. 12th Man

    This is very interesting and a practical problem for the IP Office, IP practitioners and general public. On the one hand the amount seems ridiculous, given that patent applications come in piles of papers. On the other hand, the achilles heel of the IP office is the overload of pending applications. From my own experience, ‘excessive fee’ works as a strategic deterrent for IP offices from additional, entirely clerical workload. However, getting certified copies (required by courts or other official purposes) may also fall victim to such a strategy. A careful balancing is required.

    Owais

    Reply
  2. Anonymous

    Prashant,
    Patent office takes Rs. 4000 for per certified copies, but not Rs. 4000 per page as indicated in the blog, actually its only Rs. 4/- per page . Also it seems they have taken Rs. 104, 000 for 26 documents (4000 x 26), but not charged Rs. 4 x No. of pages involved in per certified copy.

    Reply
  3. aliasgard

    Patent office seems to be in a competition to be the highest revenue earning enterprise for the Government. I had a case where the office demanded payment for 600 claims present in the PCT application, when the applicant wanted to enter national phase only with 30 claims which could be possibly granted in India!

    As absurd and ridiculous as it may sound, they even issued an examination report on the 600 claims originally filed!!!!

    Reply
  4. Anonymous

    @Kshitij & @Aloasgard
    As per PCT rules, if claims are not amended before the WIPO, the applicant is bound to enter national phase in India along with the latest claims which are on record before the WIPO. Thereafter, the applicant can voluntarily request patent office to amend the contents (even withdraw the claims) as per Indian patents act.
    This issue is not cleared even to some of the leading practitioners and some controllers as well, but a thorough reading of PCT rules, and accompanying guidelines for entering national phase in India (as available on WIPO) will make it clearer.

    Reply
  5. Anonymous

    what wonders me why did’nt the applicant file the same request in the name of an employee (or an individual).
    Normally, small companies, with a view to save costs, file everything before the patent office in the name of their employee, like some manager, or director.
    In this case, that would have straight away reduced the fee to almost 25K, and considering the fact that certified docs may be required for litigation, the company must b paying handsome fee to patent attorney and other lawyers involved. So, 25K for company is not that high !!!!!

    Reply
  6. Guy

    The Community Trade Mark Office solved the problem of overload and delays earlier this year. Certified copies of their trade mark applications are dowloadable with no fee.

    Reply
  7. Anonymous

    @ Anon 4:07 PM
    The same people who creates unncessarily hue and cry in blogs for their own interest without considering Act and rules silently pays all the fee when asked by the EPO and USPTO and other developed countries.Poor Indian mentality of double standard to skip fees and taxes !Morever this guys are not paying the fee from their pocket rather from their multinational clients here in India.

    Reply
  8. Anonymous

    Dear Readers
    I think, this is a matter of rules under the Patents Rules which prescribe the amount of fee chargeable for various activities. The certified copy is not just a photocopy of document. It involves the verification of entire documents for which certified copy to be isssued. In case anything goes wrong, the official concerned will be held responsible in the court. Therefore Rs 4000 is too small compared to the risk and the responsiblity involved. Thefore our mind set should change and judge this issue before concluding on this kind of matter.

    Reply
  9. kadan

    the rule book stipulates that a certified copy costs Rs. 4000…and that a photcopy costs Rs. 4.

    simple math would show that Rs. 4000 is not hedged by the number of pages..its the preparation and the seal of the IP office which is of significance.
    Hence even if it is a one page document or a 1000 page document.. the fee to obtain a certified copy of either would be a flat Rs. 4000.

    (For those who see red to the IPO’s contention , its a nominal price if the certified copy sought runs into some hundred pages…as the cost irrespective of the pages would be a stagnant rs. 4000.)

    Reply

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