Now as per the Patents Act, 1970 only Controllers can grant patents, which effectively means 70 Controllers had to have granted 16,061 patents in 2008-09. The reality however is different. Controllers have not been the only persons granting patents since examiners too have been granting patents on a regular basis until the current Controller General P.H. Kurian took over office. The question is whether this is permissible under the law.
I. The scheme of examination and grant of patents under the Patent Act
On a joint reading of Sections 11A, 11B, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 25 and most importantly, Section 43 it is crystal clear that as per the Patents Act, 1970 patents can be granted only by the Controller.
The scheme of the Act is very simple. It involves a two-tiered system involving a Controller and an Examiner. The request for examination of the published patent application, under S. 11B can be made to only the Controller of Patents who then passes it on to the Examiner of Patents under S. 12, who then carries out a search for anticipation and obviousness under S. 13. The Examiner then submits his Report to the Controller of Patents who considers it and decides on whether or not to grant the patent under S. 14 or S. 15.
From the scheme of the Act it is quite clear that the Examiner is not supposed to have any interaction with the applicant. The advantage of such a setup is that when the Examiner does not have an interaction with the applicant, he or she is likely to be a lot more unbiased in preparing the examiner’s report and hopefully preventing a situation of ‘regulatory capture’.
II. The actual examination process in the Indian Patent Offices
Around six months ago I had blogged about a certain patent granted to Bharat Bhogilal Patel and how the patent had been granted by an examiner of the Mumbai Patent Office and not a Controller. At that time I was not sure as to how prevalent this practice was in other patent offices but given that the patent office has enabled online file inspections I have been able to access the file-wrapper details of other patents being granted by the Delhi and Chennai patent offices and it appears that these patent offices are following the same practices as the Mumbai Patent Office.
The following are the patents that I examined from the various patent offices:
(i) Patent Application No: 3355/DEL/1998 filed and granted to B Braun by the Delhi Patent Office; (available here)
(ii) Patent Application No: 1240/DELNP/2004 filed and granted to Ericcson by the Delhi Patent Office; (available here)
(iii) Patent Application No: IN/PCT/2002/02173/CHE filed and granted to Dr. Wobbens by the Chennai Patent Office; (available here)
(iv) Patent Application No: 161/MAS/2002 filed and granted to Ramkumar by the Chennai Patent Office; (available here)
(v) Patent Application No: 611/MUM/1998 filed and granted to Bharat Bhogilal Patel by the Mumbai Patent Office; (available here)
(vi) Patent Application No: 649/MUM/2002 filed and granted to Bajaj Auto Ltd. (available here)
Unfortunately the Kolkata patent office is not uploading its correspondence with patentees and I’m unable to confirm the practice in the Kolkata patent office.
III. Can such patents granted by Examiners be set aside by a writ court?
Yes, most certainly. The argument that would run against the grant of such patents would be quite simple and would be two-fold.
(a) The main question of law involved is whether Controllers can further delegate to Examiners, the powers that have been delegated to them by the Controller General under Section 73 of the Patents Act, 1970.
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.
(b) Examiner corresponding with the Patent Applicant in violation of statutory scheme: As already explained above the scheme of the Act is clear, the examiner is not supposed to be corresponding with the patent applicant. This has clearly been violated by the patent office on multiple occasions.
Patents which have not been granted as per the law are bound to be set aside by a writ court with orders that the Patent Office comply with the provisions of the statute while re-examining the patent. A useful precedent in this regards is the judgment of the Division Bench of the Madras High Court in the case of Indian Network for People living with AIDS/HIV v. Union of India, W.P. No. 24904 of 2008. In this case the Madras High Court had set aside the grant of the patent. In pertinent part it stated:
50. Therefore, when monopoly right of patent is granted in favour of the fourth respondent ignoring the aforesaid procedure, it is clear that it has been granted with some incurable defects in the procedure namely, by non-compliance with the provisions of statute and statutory rule. Such grant is inherently defective, since grant here is grant of right in rem. The prejudice in this case has been pleaded, as stated herein above, and has not been denied in the counter filed by the fourth respondent. Therefore, the decision in Harendra Arora does not help the case of the fourth respondent in any way.
51. There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable.
Since in all of the above cases it is obvious that the examiner and not the Controller has granted the patent it is quite likely that any writ court would set aside all of the above patents with directions that they patent office re-examine all such patents as per the procedure established by law. I’ve heard that this practice of Examiners signing on behalf of Controllers was stopped by the present Controller General Mr. P.H. Kurian after he took office.