[Warning: Long post]
Two High Courts recently handled interesting questions of deadlines in patent prosecution: the Delhi and Madras High Courts dealt with the consequences of errors in recording important filing-related dates. Both cases involve one of India’s best known IP firms, Anand and Anand, who took their grievances to court after the Intellectual Property Office (IPO) refused to entertain their requests to condone the delays. Both decisions offer valuable lessons in how not to kill a patent application because of, as a school-teacher of mine used to put it, ‘silly mistakes’. (Image from here.)[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)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.”
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.
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.
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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!
Excellent post, highly educative!
Nice post Sumathi.
There was one more case last year where the same firm had argued that delay of about 10-12 days should be condoned because of a glitch in their docketing system. This reasoning did not work with the Controller and delay was not condoned.
Textbook cases of determining last dates. I would not be surprised if decisions like this make their way into the patent agent exam.
It is very welcome decision and interpretation of the rule 138 by Hon’ble High Court, being patent applications would now be judged on its merit and not on mere form & formalities.
However, one point that is bothering me is….
R 138 (2) speaks “…………before expiry of prescribed period” why not “………….within one month period as set in subrule 1”; the term “before expiry of prescribed period” could have easily been replaced by the term “within one month period”.
But law says “…………before expiry of prescribed period” this is may be because law wants to make a common reference to the many time limit defined in the patent rules and not to the only term “one month”. (JUST PERSONAL VIEW)
“…………before expiry of prescribed period” should be stick to the time limit set out in the R 20 and not to the “one month” (R20 being one of the time limits in the patent rule).
I feel, the request for extension for one month time should be placed setting out reasons thereof before expiry of the due date (to be complied) and not after expiry
…… one imaginary example…..
priority date — 15 jan 2010
deadline for form 18 — 15 jan 2014
(if form 18 not filed upto 15 jan 2014) and on 25 jan I make enquiry to patent office about status of the application……….answer should be abandoned ……. I started using this invention………….on 10 feb 2014 applicant files request for extension of time and form 18…………..patent granted and lead to infringement suit ……….why infringer should be punished.
If extension is filed before 15 jan 2014………….at least patent office is aware and answer to status of application would not be “abandoned”.
SD
Did the Madras High Court condone the delay itself or did it remand the application to the Patent Office to request it to determine the application on its merits?
If its only remanded the application then the Patent Office is still free to reject the application after giving a considered decision in this regard.
Hi – thanks for your comments everybody.
#Rajendra – Thanks 🙂 appreciate it.
#Rajiv – agree, the issue/s was fairly straightforward in both cases. From a practice point of view, I’m wondering if applicants should now be advised to keep track of their own dates, instead of relying on attorneys exclusively.
#SD – I was having a similar doubt when drafting this blogpost, and was wondering whether the request for extension actually ought to be made within the primary prescribed period, rather than in the one month extension granted under rule 138. However, the Madras HC decision appears to have interpreted the provision otherwise, and for the time being, unless there’s an extant judicial view to the contrary, this position stands.
#Anon @ 8.21 – You’re correct. The HC basically asked the IPO to take the request for extension on record, and decide that application on merits. It remains at the discretion of the IPO to accept or reject the request.
And this feeds off SD’s comment before your own: I think the substance of the Madras decision is that a request for extension can’t be deemed not maintainable merely because it was made in the one month after the formality was due to be completed. So long as the application is made in that one month, the IPO must necessarily take the application on record. Whether or not it accepts/rejects it is a different matter altogether.
Dear Sumanthi,
If you read para’s 9 to 12 of the order, it is clearly stated that the petition was taken on record, a hearing was provided to the attorneys and keeping in view with the admissions made by them, the Controller held that the application could not be entertained for not complying with the timeline laid down in Rule 20.
If that substance of Madras HC judgment was to instruct the Patent office to take the petition on record and then decide the case on basis of merit, it was already done once. I don’t understand the reasoning for remanding back the application to the same office and letting them decide the same issue again on merits (which basically remains an omission and negligence on the part of applicant’s attorneys).
It is obvious that the over conscious patent office will definitely not reject the application this time even if it doesn’t deserve any merits but what kind of example is being set by the Madras HC here? If the court saw merit in the case, wouldn’t it have been logical to pass an order directing the patent office to consider the application within time rather than remanding it back to the patent office for reconsideration on merits?
Please comment.
Aliasgar
Hi Aliasgar —
Thanks for your comment, and for pointing out paras 9 to 12 of the decision.
While writing the post, I was relying on the later part of the decision, and in particular, para 35, part of which reads thus:
“As already observed above, it is the discretion of the Controller to extend the period on facts and circumstances of the case, but it was not correct on the part of the Deputy Controller to have rejected the application, by treating it to be not maintainable, as having been filed after expiry of prescribed time under rule 20 of the Patents Rules 2003. The merits of the facts disclosed were to be considered.”
In reading this para, I gathered that the court was dissatisfied with the IPO having deemed the request for extension not maintainable outright, simply because it was filed in the one month extension period after the 31 month filing period lapsed. But paras 9 to 12, which contain the submission, do seem to be at odds with the observation in para 35. The court, thus, has deemed the request for extension valid to the extent that it was made within the one month extension. The eventual decision (of granting the extension as requested or not) is still left to the IPO.
My own understanding of Rule 138(2) was to the contrary, as pointed out in my comment to SD earlier. This present interpretation of the Madras HC is in fact hugely beneficial to applicants/attorneys in that they may be able to remedy omissions even upto a month after the prescribed formality time period expires.
And I don’t think the issue in suit was whether or not the extension should in fact be granted (in response to your last question). Since you’ve brought it up, though, will the IPO now refuse to grant the extension (on merits of the case)? – I think it’s a moot point. Your comment suggests that there may be a perceived fear of future censure by the HC (?), and hence the IPO will not reject the request. I disagree, and believe that the HC respects the decision-making ability of the IPO sufficiently to allow them to assess the facts independently and decide accordingly.
Please feel free to correct me if you think my interpretation is wrong!, or if you think I have misunderstood you.
PS: my name is Sumathi, minus the ‘n’! 🙂 Thanks and cheers
Dear Sumathi,
Thank you for the reply and I apologise for the goof up in spelling you name.
The interpretation of Rule 138 by the Madras HC “On true interpretation of rule 138, it is held that application for extension is to be filed within one month after expiry of prescribed time under rule 20.” is indeed baffling to many in the community. A plain reading of the Rule with its proviso gives the idea that Rule 138 applies only in cases where request for extension is made while one is within the time limit of doing any act as prescribed by the rules. In practice, we normally rely on Rule 137 to condone delays since logically and majority of the times the irregularity is noticed only once the deadline has passed by (as in the present case).
If the issue in the petition was not to decide if an extension should be granted or not, than the order doesn’t make any sense. On reading of Paras 9 to 12, it is clear that the patent office took the application for extension on record, provided an opportunity of being heard to the applicant’s attorneys and also allowed them to make submissions relating to facts of the case and points of law to be considered. A proper procedure was followed by the patent office before refusing the application. If HC respected the decision making ability of the Patent office, there was no need for the Madras HC to remand back the application to patent office and let the cycle repeat once again. I don’t see an error being committed by the patent office on points of Law or an omission by the patent office in considering the facts of the case (since none has been pointed out by the Learned Judge presiding over the case).
If the IPO now considers the application to be filed within the time limit, it is only going to further damage its credibility since there will be two opposing decisions by the same authority on the same points of fact!
Aliasgar
This is the problem with patent agents dabbling in the law – even a simple judgment gets distorted.
Sumathi has correctly pointed out that the Order was quashed because it was not reasoned by the Controller. Instead of considering the cause for delay and deciding whether this reason was valid, the Controller has rejected the application outright.
When the application goes back to the Controller he will have to decide whether the patentee has given the appropriate reason for the delay. If it was the patent agent’s fault, the Controller General should allow the application but penalize the patent agent by derecognizing him.
Dear Anon,
Many thanks for your comments, but i wonder what made you hide behind an anonymous veil for making this comment?
Anyway, from your comments i draw the following two conclusions, 1) you have not read the judgement completely, 2) you are not a practicing agent to know enough about how the patent office works in reality.
The fact that patent office entertained the petition, heard the attorneys, allowed them to make a written submission stating the reasons for delay, says enough that the Controller did not reject the application outright without considering the reasons for delay. You have however made a very good suggestion here about penalising agents for their misdeeds. I doubt something like that happening in the present case, but if it does, it will set a very good precedent.
Aliasgar
Dear Anon,
Thank you for your comments. But i wonder whats makes you hide behind a veil for making such statements.
Anyways, you must have read 10 books of law compared to 5 of mine and u might think you can dabble much better than me when it comes to law, however, please note, a judgement is good only if it does justice to to case.
You have raised a valid point here of penalizing the defaulting attorneys rather than make the applicant suffer but you know very well neither of it is going to happen. The patent office did all what that was required by taking the petition on record along with attorney’s written submissions and reasons for delay before passing on order rejecting the application. If you are still making a statement that the patent office did not consider the cause of delay and rejected the application outright, please read the judgement carefully.
Hope this comment gets published unlike the last one!
Aliasgar
This is ridiculous. The Hon’ble court missed out a very critical point here. An application for condonation of delay cannot be entertained in such case. The court did not give mush attention to Rule 22 of Patents Rules 2003, which says in case of non-compliance with this 31 month deadline, the application is deemed to be WITHDRAWN. The ‘deemed to be withdraw’ is an act of more serious nature then an application being abandoned. It is construed as an application irretrievably dead. Justice Murlidhar in the Nippon case said an application deemed to be withdrawn does not exits in the eyes of law. It is beyond the powers of Controller or the Court to revive an application which is as good as dead. Rule 138 has been erroneously considered by court (it is only for extension and not condonation). Rule 17 is not applicable when there is specific provision. Secondly, condonation of delay under r. 137 is subject to ‘without detriment to interest of any person’ – which further involves a quagmire of serious issues which are always bypassed by court and controller.
The court had the chance to clear out the ambiguities regarding r. 137 and 138, but it seems to have added instead.