[Warning: Long post]
[NB: this post may contain prosecution jargon which may seem abstruse to some readers. My apologies for being unable to find normal English equivalents for some terms – but it wasn’t for lack of trying!] Decision 1: Madras HC: Nokia Corporation vs Deputy Controller Of Patents and Designs (read here)
Nokia’s application was filed under the National Phase (PCT) in India on 18 August 2009, claiming priority from a US application filed on 11 January 2007. For those not in the know, an applicant must enter the National Phase in India under the Patent Cooperation Treaty (PCT) within 31 months of the priority date (Rule 20, Indian Patent Rules). That date lapsed on 11 August 2009. The IPO, thus, returned the application as the time-limit for entering India had passed.In response, Nokia filed the application once again, along with a request under Rules 137 and 138 of the Indian Patent Rules, requesting the IPO to condone the delay. (Rules 137/138 grant discretionary powers to the Controller of Patents to condone delay in some circumstances by up to one month after the prescribed time limit has lapsed.) This request was not entertained, and the matter reached the courts.
The IPO argued that requests under rules 137/138 ought to be made within the prescribed time limit. Since the request was not made within the 31-month period, it could not be taken on record. Justice Vinod K Sharma of the Madras High Court disagreed, quashing the IPO’s earlier order. The court returned the application to the IPO, observing “it was not correct on the part of the Deputy Controller to have rejected the application, by treating it to be not maintainable”. It also held that:
Decision 2: Delhi HC: Nippon Steel Corporation vs Union Of India (read here) The facts here were different from Madras, as was the decision, with the court ruling that a delay in filing a Request for Examination (RFE) could not be condoned under any circumstance.
An “application for extension is to be filed within one month after expiry of prescribed time under Rule 20. In case, an application is moved for extension of time … it is required to be decided on merit by taking into consideration facts and circumstances of each case.”
For those unfamiliar with patent prosecution, an applicant needs to make a request to the patent office to examine a patent application within 48 months of the priority date of the application. Otherwise, the application will be deemed to have been withdrawn (section 11-B(4), Indian Patents Act).
In this case, due an error while entering the dates in the database, the date of filing the RFE (Feb 2010) was missed by over 8 months. When the mistake came to light, the attorneys attempted to remedy the situation, by seeking to amend the application and change its priority date.
The parent application was filed in Japan in 9 February 2006, from when the Feb 2010 deadline for the RFE was calculated. The corresponding PCT application was filed on 9 February 2007, a year later. Logically, if the IPO were to accept the request to drop the Feb 2006 priority date and change it to Feb 2007, correspondingly, the deadline for filing the RFE would extend by a year from when it was originally due.
As it turned out, the IPO refused to entertain the request for amendment, pointing out that the request had become time-barred, since the application had ceased to exist (on account of S. 11-B(4)). Therefore, according to the IPO, there was no question of amending a non-existing application.
When the matter reached court, the patent applicant argued, among other things, that while there may be a time limit for submitting an RFE, a request for amending the priority date could be taken on record at any time. Justice S Muralidhar of the Delhi High Court, in a decision crafted with immense clarity, held that a request for amendment could be made “only in relation to an application that exists in law”. The applicant’s writ petition was dismissed without merit, and the IPO’s decision to reject the request for amendment was upheld.
The patent attorneys succeeded before one court, but could not convince the other, of reasons for the delay in meeting deadlines. Of course, circumstances were different in the two cases, but both Delhi and Madras HC are saying the same thing, and stating the obvious, really – it’s best if you stick to prescribed time limits, because it’s not going to be an easy job convincing the authorities otherwise!