I cannot believe how fast time goes and we are end of yet another year! For a tribute to the year gone by, we bring for our readers, a summary of the controller’s decision delivered. So before going further, Happy holidays wish you all a very happy and interesting new year 2012!!
Interesting statistics:
Number of decisions rendered: 97 including unavailable files.
Number of refusals/revocations: 89.5.5 (including one partial rejection, and unavailable files)
Number of grants: 7.5 (including one partial allowance).
Maximum number of decisions rendered by: Delhi patent office (42), closely followed by Mumbai (34); Chennai (20) -few decisions, with Kolkata (2) at the least number of decisions.
Many 3(d) decisions and a few 3(k) decisions.
Some Controller’s have not given even one allowance!
A more detailed summary is available here in PDF.
| # | Application # | Applicant | Decision | Comment |
| 1 | 311/MUMNP/2006 | HUIYANGTECH (USA) INC | Refused | Double patenting |
| 2 | 925/CHE/2003 | NOVARTIS AG | Refused | Double patenting |
| 3 | 4015/DELNP/2006 | WARNER-LAMBERT COMPANY LLC | Refused | 2(1)(j), 3(d) |
| 4 | 74/DEL/2005 | Lalit Mahajan | Allowed | Principles of natural justice |
| 5 | 75/Del/2005 | Lalit Mahajan | Allowed | Principles of natural justice |
| 6 | 2480/Del/2007 | Lalit Mahajan | Allowed | Principles of natural justice |
| 7 | 2653/Del/2006 | Lalit Mahajan | Allowed | Principles of natural justice |
| 8 | 2654/Del/2006 | Lalit Mahajan | Allowed | Principles of natural justice |
| 9 | 2690/DEL/2006 | Lalit Mahajan | Allowed | Principles of natural justice |
| 10 | 1995/del/2006 | LES LABORATORIES SERVIER,FRANCE | Refused | 2(1)(j), 3(d), 3(e) |
| 11 | 924/DELNP/2006 | BOEHRINGER INGELHEIM INTERNATIONAL GMBH | Refused | 2(1)(j), 3(d) |
| 12 | 1947/CHENP/2006 | University of Sheffield | FILE UNAVAILABLE | |
| 13 | 1825/delnp/2004 | M.I.M. HOLDINGS LIMITED | Refused | 2(1)(j) |
| 14 | 623/MUMNP/2004 | PHARMACIA AND UPJOHN COMPANY | Refused | 3(d) |
| 15 | 50/CHENP/2006 | H. LUNSBECK A/S | Refused | 3(e), 2(1)(ja) |
| 16 | 27/MUMNP/2007 | BAYER HEALTHCARE AG | Refused | 3(c ), Double patenting |
| 17 | 907/MUMNP/2008 | EMTHRAX, LLC | Refused | 2(1)(j), 3(i) |
| 18 | 934/MUMNP/2008 | F. HOFFMANN-LA ROCHE AG. | Refused | 3(i) |
| 19 | 1782/del/2004 | M/s. ACME Telepower Pvt. Ltd. | Revoked | 12(1)(a), 10(4) |
| 20 | IN/PCT/2000/405/CHE | M/s BIOCHEMIE GESELLSCHAFT MBH | FILE UNAVAILABLE | |
| 21 | 3553/CHENP/2006 | M/s EISAI CO., LTD | FILE UNAVAILABLE | |
| 22 | 906/MUMNP/2006 | ULRICH BOGDAHN | Refused | 10(4)(c), 10(5) |
| 23 | 105/CHE/2005 | Baiju V.N | Refused | 2(1)(j), 2(1)(ja), 10(4)(a/b/c) |
| 24 | 1588/del/2004 | ACME TELE POWER (P) LIMITED | Revoked | 2(1)(j), 3(d) |
| 25 | 680/MUMNP/2006 | H.LUNDBECK A/S | Refused | Double patenting |
| 26 | 6221/delnp/2006 | GLAXOSMITHKLINE AUSTRALIA PTY,LTD | Refused | 2(1)(h), 3(h), 3(j) |
| 27 | 1696/delnp/2004 | KYORIN PHARMACEUTICAL CO.LTD | Refused | 2(1)(j) |
| 28 | 1459/CHE/2004 | TVS Motor Company Ltd. | Refused | 2(1)(j), 2(1)(ja) |
| 29 | 1799/delnp/2004 | teva pharmaceutical industries ltd | Refused | 2(1)(j), 3(d), 10(5) |
| 30 | 1718/CHENP/2005 | Premier Evolvics Pvt. Ltd. | Revoked | 2(1)(j) |
| 31 | 1049/CHE/2004 | NATCO PHARMA LIMITED | Refused | 3(e), 2(1)(ja) |
| 32 | 1251/del/2004 | LEK PHARMACEUTICAL AND CHEMICAL COMPANY D.D. | Refused | 2(1)(j), 3(d) |
| 33 | 1324/delnp/2006 | ALLERGAN,INC. | Refused | 2(1)(j), 3(e) |
| 34 | 524/DEL/2004 | Council of Scientific and Industrial Research | Refused | 2(1)(j) |
| 35 | 1331/DELNP/2004 | Micro Algae Corporation, U.S.A. | Refused | 3(i) |
| 36 | 1688/MUM/2006 | NANO CUTTING EDGE TECHNOLOGY PVT. LTD. | Refused | 2(1)(j) |
| 37 | 368/MUM/2008 | Transasia Bio-Medicals Ltd. | Refused | 2(1)(j) |
| 38 | 614/MUMNP/2006 | Aegera Therapeutics, Inc. | Refused | 2(1)(j), 3(i) |
| 39 | 1440/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 40 | 2048/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 41 | 367/MUM/2008 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 42 | 368/MUM/2008 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 43 | 1856/MUM/2007 | TRANSASIA BIO-MEDICALS LTD | Refused | 2(1)(j) |
| 44 | 2247/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 45 | 2048/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 46 | 1439/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 47 | 2355/MUM/2007 | TRANSASIA BIO-MEDICALS LTD. | Refused | 2(1)(j) |
| 48 | 5242/delnp/2005 | Huawei technologies co. Ltd. | Refused | 3(k) |
| 49 | 1436/MUMNP/2005 | PRINCETON UNIVERSITY, USA | Refused | Double patenting |
| 50 | 4438/delnp/2006 | Teva Pharmaceutical Industries | Refused | 2(1)(ja), 3(d) |
| 51 | 830/CHENP/2006 | SCHERING CORPORATION | Refused | Double patenting |
| 52 | 1055/DELNP/2004 | Laboratoires Serono SA | Refused | 2(1)(j) |
| 53 | 5397/DELNP/2005 | QUIMICA SINTETICA S.A. SPAIN | Refused | 2(1)(j), 3(d) |
| 54 | 223/MUMNP/2007 | LESAFFRE ET COMPAGNIE | Refused | 3(i) |
| 55 | 1707/MUMNP/2008 | GENERAL HOSPITAL | Refused | 2(1)(j) |
| 56 | 599/DEL/2006 | OPEN PLUG | Refused | 3(k) |
| 57 | 1237/DELNP/2006 | General Electric Company. | FILE UNAVAILABLE | |
| 58 | 0011/DEL/2005 | ANJULA LAXMI | FILE UNAVAILABLE | |
| 59 | 1602/DELNP/2004 | GUSTAV KLAUKE GMBH | FILE UNAVAILABLE | |
| 60 | 1996/DEL/2006 | LES Laboratories SERVIER | Refused | 2(1)(j), 3(d), 3(e) |
| 61 | 863/MUMNP/2003 | PFIZER PRODUCTS INC. | Revoked | 2(1)(j), 3(d) |
| 62 | 2473/DELNP/2006 | ENI S.p.A. | Refused | 2(1)(j) |
| 63 | 727/MUM/2006 | OMNIACTIVE HEALTH TECHNOLOGIES PVT. LTD. | Refused | 2(1)(j) |
| 64 | 1225/MUM/2005 | IPCA LABORATORIES LTD | Refused | 2(1)(j) |
| 65 | 991/MUMNP/2003 | PFIZER PRODUCTS INC | Refused | 3(d) |
| 66 | 399/CHENP/2003 | UNIVERSITY OF TENNESSEE | FILE UNAVAILABLE | |
| 67 | 593/CHENP/2005 | M/s Novartis AG | Refused | 2(1)(j), 3(d) |
| 68 | 201/MUMNP/2007 | UCB FARCHIM S.A [AG-LTD] | Refused | Double patenting |
| 69 | 1299/MUMNP/2006 | KAPITZ, CARL-HEINZ & KNAPP, GERHARD, Germany | Refused | Double patenting |
| 70 | 2279/DEL/2005 | MAM CHAND,HARKESH KUMAR,BANSI LAL AND RAJESH KUMAR | Revoked | 2(1)(j) |
| 71 | 1024/MUMNP/2005 | HELSINN HEALTHCARE S.A. | Refused | 3(d), 3(e), 3(i) |
| 72 | 320/MAS/2003 | K.Devaraj | Refused | 2(1)(j), 3(b). 10(4) |
| 73 | 1618/DEL/2005 | YUNG CHI Y.C. INDUSTRIAL CO. | Revoked | Prior Use |
| 74 | 811/MUMNP/2005 | E.I.DU PONT NEMOURS AND COMPANY | Refused | 2(1)(j) |
| 75 | 3599/CHENP/2006 | RHODIA CHEMIE | FILE UNAVAILABLE | |
| 76 | 2042/DEL/2004 | LABORATOIRES DES PRODUITS ETHIQUES ETHYPHARM | Refused | 2(1)(j) |
| 77 | 602/del/2007 | Gilead Sciences Inc. | Refused | 2(1)(j), 3(d) |
| 78 | 2100/MUMNP/2007 | AM PHYTO CONSEIL S. A. R. L. | Refused | Abandoned |
| 79 | 756/CHENP/2006 | UNITED RESOURCE RECOVERY CORPORATION | Refused | 2(1)(j) |
| 80 | 1083/MUMNP/2007 | GOOGLE INC. | Refused | 3(k) |
| 81 | 6618/DELNP/2006 | ABBOTT BIOTECHNOLOGY LTD | Partial allowance/refusal | 3(d), 3(e), 3(i) |
| 82 | 5043/DELNP/2011 | Durect Corporation | Withdrawn | Delay |
| 83 | 1194/KOL/2005 | BHARAT HEAVY ELECTRICALS LIMITED | Refused | 2(1)(j) |
| 84 | 683/CHE/2004 | C.V.NAGARAJA RAO | Refused | 10(4)(c), 10(5) |
| 85 | 1494/DELNP/2010 | Information In Place Inc. | Withdrawn | Delay |
| 86 | 5402/DELNP/2011 | Abbott Laboratories | Wihdrawn | Delay |
| 87 | 1098/CHENP/2007 | JAPAN TOBACCO INC | Refused | 2(1)(ja), 3(i) |
| 88 | 906/MUMNP/2006 | ULRICH BOGDAHN | Refused | 3(i) |
| 89 | 540/MUMNP/2007 | GOOGLE INC. | Refused | 3(k) |
| 90 | 4331/DELNP/2005 | INDUCTOTHERM CORP. | FILE UNAVAILABLE | |
| 91 | 1945/CHENP/2005 | THE SCRIPPS RESEARCH INSTITUTE | Refused | 3(i) |
| 92 | 500/CHENP/2004 | VIRGIN ATLANTIC AIRWAYS LIMITED | Granted | |
| 93 | 2490/DEL/2004 | SU-KAM COMMUNICATION SYSTEM LTD | Refused | 2(1)(j) |
| 94 | 2000/DELNP/2003 | ENTELOS , INC. | Refused | 3(k), 3(i) |
| 95 | 102/DELNP/2005 | MOTOROLA, INC. | Refused | Double patenting |
| 96 | 1327/KOLNP/2005 | SANDVIK INTELLECTUAL PROPERTY AB | Refused | 2(1)(j) |
| 97 | 3801/DELNP/2005 | SYNTHES AG CHUR, | Refused | Abandoned |
A good job done by the author! Thank you so much. Wish you a very happy new year.
I had come across couple of decisions of IPO. Among those, the decision of 1327/KOLNP/2005 is really interesting. However, in my opinion, the decision could be made a little bit shorter. The nutshells of the novelty and the inventive steps have clearly been shown in the decision. I would request officials of IPO to go through this decision and follow the merits of the decision please.
You seem to be more interested in patent office/law.
I understand you know about the latest controversy going on with respect to the deadline for filing of form 18 in respect of the applications which have National Phase entry of PCT applications. There is contradiction in the Patent Rules and WIPO guidelines with respect to the same. The matter went in High Court of Delhi in September, 2010 and the Delhi High Court (Justice Dr. S. Murlidhar) has found that there are discrepancies and the Patent office has been directed to give a hearing to the applicant and other who may like to be heard.
There is yet another matter pending before DB of Delhi High Court wherein some date in February, 2012 is fixed.
What is your opinion about it. Also the opinion of readers would be welcome.
hi Rajeev,
Nice statistics.
can you tell me how did you got this information??
Under RTI..??
Regards,
PatenTM
Anonymous @9:01 PM: I understand that there are some issues with the decision you cited. Decisions like these highlight the logic employed. In addition, one wonders if the same set of facts could have resulted in a different decision at a different patent office or even with a different Controller.
Anonymous @9:25PM: Could you give us more details about both the cases (Sept. 2011, and the one with February 2012 date)?
As far as I know, the Sept. case is not yet final.
PatenTM:
This information is available online and is accessible from the home page of our IP office. There is a link named Controller Decisions in the left hand panel.
Controller Decisions
Dr. Dinesh P. Patil 24
Dr. Rajesh Dixit 12
Dr. SP Subramaniyan 11
Dr. K.S. Kardam 9
Dr. Amaerendra Samal 7
BP Singh 5
Shah Alam 4
P Balamurugan 3
Anoop K. Joy 2
N.R. Meena 2
Pinkesh Jain 2
Saroj Kumar 2
Dr. Ruchi Tiwari 1
M. Ajith 1
Nilanjana Mukherjee 1
O. Prasad Rao 1
P Srinivasa Rao 1
Pramathesh Sen 1
S.N. Sav 1
Sameer Swarup 1
Santanu Dey 1
TV Madhusudan 1
Vinod Kumar 1
Would somebody at the Chennai patent office please check the type of files they are uploading. All decisions issued from the Chennai patent office are image PDF’s and are extremely large. Why can’t they function like the Mumbai or Delhi patent offices?
Decisions given by KS Kardam are examples of dichotomy on a similar set of facts. If delay for patentee can be condoned by imposing a nominal cost (Lalit Mahajan cases), then why can’t delay in filing national phase applications be cost by imposing a larger cost.
Rajiv,
It is Anonymous 1.25 PM (you have mentioned 9.25PM).
In fact the judgment is of Justice R. S. Endlaw dated 23/9/2011 in WP© No. 6875/2011 in the case of Carlos Alberto. The other case is decided by Justice Dr. S. Murlidhar in the case of Nippon Steel Corporation WP© No. 801/2011 against which an LPA No. 379/2011 is pending. The next date fixed is 23/2/2012.
Rajiv @8:24 PM:
You have pointed out the right thing. The uniqueness in decision in all the four offices is not possible right at this moment mainly due to the lack of analytical ability and personal interests (in some cases) amongst the officers. However, the table indicated in the decision of 1327/KOLNP/2005 clearly indicates the outcome. A person who has analytical ability in the field of study (in the field of study for 1327/KOLNP/2005) would conclude in the similar manner. The disparity in decisions in different patent offices, with the same set of logic and facts in the patent documents, should be looked into immediately by the authority, say DIPP. On the same time I state that this is not possible in near future in the present mental framework of the officers, including CGPDTM, working there. I am sorry to point out that the organizational set up is so poor that closeness of decisions is not expected from them. The learning curve of the authorities of IPO and its officers are declining rapidly! And this is another reason for disparity in decisions given the same set of logic and facts. Perhaps these were your unspoken words Rajiv in your post @8:24 PM!
Anonymous @11.44. Similarly penalty for delay in filing form 18. See if you are unable to file form 18 within time for whatever reason, you loose your right for all times to come. This is in particular reference to the PCT applications as there is discrepancy in the WIPO Guidelines and the Patent Rules. The Patent Rules say that in case of any discrepancy the WIPO Guidelines will prevail.
One thing I want to point out with respect to delays. The patent office does not look into the replies to FERs which are filed in time and much before the deadline. The same are seen after several weeks/months of the deadline and the applications are accepted in back date.
Anonymous@11:47AM: Thanks for the info on the Carlos case. Sumathi had covered the Nippon Steel decision in an earlier post. It seems that the LPA is a perfect opportunity for the DHC to set a precedent for the IPO.
Anonymous@ 10:07AM: You are correct to point that the manual states WIPO Guidelines will prevail over patent office rules. But the manual is an unofficial document. Till the time a Court in India decides the issue, the IPO may continue to ignore WIPO rules.
Anonymous@8:48AM: Have a look at the Ericcson v. UOI case to see how our patent office used to treat FERs. Hopefully that is not the case now! http://indiankanoon.org/doc/1680451
Dear Rajiv,
I am highly thankful to you for pointing out the judgment in the case of Ericsson which has relied on another judgment reported in PTC on the point of abandonment.
Having said that, please believe me there are cases pending in IPO where the reply to FER has been filed in time, the deadline has expired, no further objections/deficiency letter or Second ER has been received, yet the application is pending and I know that the hearing would be taken up some times still later which could be even six months or more after the deadline.
With respect to Section 21(1) of the IPA 1970 with respect to the abandonment, I have noticed that the said Section is proving draconian and on account of the language used in the said section, the Controllers play dictating attitudes and insist upon many things which are sometimes unwarranted. Their opinion is that whatever they say has to be complied with under all the circumstances OTHERWISE since you have not made your application in order of acceptance, the application is deemed to have been abandoned. This rule of deemed abandonment is used more by the IPO officials than passing a order refusing the application. For if they refuse the application it is an appeal able order. Secondly, one has to work on it to pass an order. Hence deemed abandonment is the most convenient way for them.
Rajiv,
The point raised by Anonymous @8.45AM needs to be seen seriously. What do you say on the factual position as prevailing.
Anonymous @8:46AM: Could you send me the details of the cases (application number, applicant etc.) on my email: rajiv.choudhry[at]gmail.com.
Anonymous @9:36 AM: Such things are highly irregular and may be the exception rather than the norm.
Sending the details of the application number and the applicant name would not serve any purpose. Rather it may spoil the cases which are pending, should you disclose the details. Believe me it is a norm and not exception.
I am highly indebted to this post !! Thanks Rajiv !
I agree with PG when he/she says “why are any guidelines published on the website at all when no real legal sanctity is being accorded to them”.
I would rather like to add the word “wrong” before the word “guidelines” to read as “why are any wrong guidelines published on the website at all when no real legal sanctity is being accorded to them.”
Besides PG has raised a question as to whether patent agent should be looking at WIPO site for professional information.
I would like to add the word ONLY to state following:
“Should a qualified Indian patent agent/ attorney be looking at WIPO site for professional information OR should he rely on ONLY the Act and Rules as published in the Gazette of India?
I KNOW OF ONE THING. If there are discrepancies in the law, the benefit always is given to the citizenery/applicant instead of taking such a harsh decision as to snatching away such a valuable IP right in an invention which has gone only on account a super technical reason or I should say misunderstanding or rather let me say misguidance by WIPO Site.
The High Court has stated that there is confusion. Dr. Kardam has also admitted that there is confusion. The question is what was being lost by any one except the applicant/inventor?
Why cant the Controller allow request for examination till the period the admitted confusion was there? After all the applicant has paid substantial sum of money as fee to the Government which is non refundable. After all what the applicant is asking is the examination of the application
I raise yet another question. Would the decision of Dr. Kardam have been different had the applicant no agent? This I am asking as Dr. Kardam has put all the burden on the agent while admitting about the confusion.
What is the answer to the question raised by anonymous @12.06PM when while referring to the Patent Officials he/she says that “even they do not provide us the documents on time”?