Patent

Missed deadlines, docketing errors and unintentional vs. unavoidable errors


The Delhi patent office recently issued two well reasoned decisions relating to PCT applications that were filed after the 31 month deadlines.  Both decisions were issued by Dr. K.S. Kardam and in both decisions, the Controller held that because the applicant had missed the deadlines, did not provide sufficient cause for extension of time, information of the applications had become part of the public domain; and both applications were therefore, deemed to be withdrawn.  Interestingly, both cases were handled by the same law firm.  This post summarizes the facts in the two cases, and provides practice pointers drawn from the same.  Hopefully, the decision in the case would alert all applicants to the dangers of reliance on a single docketing system.  Hat Tip: Sandeep Rathod.  Long post follows.

Brief Facts:

Case 1: Application No. 5402/DELNP/2011, filed by Abbott Laboratories. This application is based on  international application no. PCT/US2009/049954  filed July 8, 2009 under the Patent Cooperation Treaty (“PCT”).  The PCT application in turn claimed priority to two different provisional applications: 61/134,284, filed July 8, 2008 and 61/191711, filed September 11, 2008 respectively.  The significance of the dates under the PCT system may be seen from the following image (taken from here).  

Based on the earliest priority application filing date, the time period to enter national phase in India expired 31 months after  July 8, 2008, i.e. February 7, 2011. The reason for delayed filing mentions that the agent for the applicant, Anand and Anand, did not receive the email from applicant in the US, and hence could not file the application. The explanation for non receipt was that because the file size of the email sent to them was extremely large, they did not receive the email.  It is further mentioned that upon learning of the default in filing the application by the US attorneys,  Anand and Anand were instructed to file petitions under Rules 137 and 138 for condoning the delay, which delay was unintentional.  
In their applications,  Anand and Anand included an affidavit from their IT Head, Mr. Panda.  His affidavit stated that the email server of  Anand and Anand could, at that time, receive emails with attachments up to a maximum size of 10MB and the size of the email from the client was approximately 16MB.  Additionally, his affidavit stated that in December 2010 Anand and Anand was using a third party vendor to monitor SPAM filters and its appears that this vendor did not send a non-delivery receipt to the client or to the intended recipient at Anand at Anand.  Subsequently in March 2011, Anand and Anand upgraded their email systems/SPAM checks to avoid such future incidents.  
Applicable Law: According to the PCT system (Articles 22,23) and Indian patent law/rules (Rules 20, 22), if an applicant does not file an application under the National phase entry within the stipulated time period (31 months), the application is  deemed to be withdrawn.  Additionally, Article 48 of the PCT specifies that any Contracting state may excuse the delay in filing the national phase application if the delay was due to interruption in the mail service or unavoidable loss or delay in mail.  
In this case, the Rule 137 application was disposed by the Controller on the grounds that the provisions under the rule were discretionary in nature and applicable only when the correction of the irregularity is not detriment  to the interest of any person. The Controller cited the Delhi High Court decision in Nippon Steel Corp. v. Union of India (W.P. (C) 801 of 2011, Delhi High Court) to conclude that the provisions were applicable to amendments only and not for condoning the delay in filing National Phase application.  Similarly, the Rule 138 application was disposed by the Controller on the grounds that the Controller could extend time only when an application for extension is made before expiry of prescribed period of time.  Sumathi had in a previous post discussed this case.
The Controller also cited various other PCT Rules which were not applicable to India as India had notified WIPO about its reservations re these specific rules. The rules include 49.6, 49(f), 49ter(1)(g).  
Decision:  The Controller cited the heading/title of the petitions filed under rules 137 and 138 by the applicants and both  mentioned a petition for condonation of delay and irregularity (the rule 138 is meant for extension of time and not for condonation of delay) to conclude that the applicants did not exercise due care. Additionally, the Controller decided that condoning the delay would be to the detriment of the public because the PCT application was published after 18 months and yet the applicants chose not to enter national phase within the specified time.  As a result, information in the patent application became part of the public domain and the application stood withdrawn.
Case 2: Application No.  1494/DELNP/2010, filed by Information in Place, Inc. This application is based on  international application no. PCT/US2008/069688 filed July 10, 2008 under the Patent Cooperation Treaty (“PCT”).  The PCT application in turn claimed priority to a provisional application, 60/94892, filed July 10, 2007 respectively.  Based on the earliest priority application filing date, the time period to enter national phase in India expired 31 months after  July 10, 2007, i.e. February 9, 2010.  In this case, the application was not filed in time because of a stated error in the docketing system of the US attorney.  
Decision:  The Controller followed reasoning similar to that of Case 1 discussed above, to reach a similar conclusion.  Information in the patent application became a part of the public domain and stood withdrawn.
The applicants cited the case of Nokia Corp. v. Controller of Patents, W.P.No, 2057 of 2010, Chennai High Court granting Nokia leave to file the application under Rule 138 even after the expiry of 31 months (previously discussed by Sumathi here). However, the Controller cited the more recent case of Nippon Steel holding that the applicant was required to take time bound steps at various stages for grant of a patent.  
Practice pointers:
1.  I have highlighted the terms unintentional and unavoidable above.  Unintentional may be specific to an individual case but unavoidable is applicable for all in a similar situation.  Both case 1 and case 2 are unintentional errors and not unavoidable.  Examples of unintentional are computer system crash whereas example of unavoidable are a rogue virus taking down entire networks.  The Controller has taken a very specific reading for the term unavoidable (postal delay or mail delay) and that is an extremely narrow construction.       
2. Reliance on a single docketing system:  The situation may have been averted had the agent in India had its  own docketing database synced to that of the applicant.  Note that I am saying “synced” and not same.  Basically, the agent here could have noted only the PCT filing dates and alerted the applicant upon non-receipt of instructions or send a reminder to the applicant periodically to confirm filing/non-filing.
3.  Detriment to the interest of any person:  Per my knowledge, this is a first instance of term “detriment to the interest of any person” being interpreted as described in the decision.  The decision specifically states that  the non filing in time resulted in the withdrawal…and therefore as such makes every Indian national entitled to use or enjoy the invention disclosed in this application freely without the fear of infringement in a way they wish to as the information of the invention has become part of the public domain. It would be interesting to see the result of any appeals arising from these decisions and we shall keep our readers updated on the same. 
4. Avoid missing deadlines!!  
Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

17 comments.

  1. Avataryunus

    please correct….the 31 months deadline in 1st case expires on Feb 8, 2911 and not on Feb 7, 2011 and in 2nd case it would expire on Feb 10, 2010 and not on Feb 9, 2010.
    thanks
    yunus

    Reply
  2. AvatarAnonymous

    It is surprising to note that the law firm in both these cases is none other than Anand and Anand. They keep missing deadlines and keep getting additional work. I wonder if this is because there is no other law firm that can effectively match them in expertise.

    Reply
  3. AvatarAnonymous

    It is not only the agent which has been mentioned in the blog but some other attorneys are missing the deadline in filing either the national phase application or form18 request for examination.

    Reply
  4. Avataryunus

    Dear Rajiv:
    you are still incorrect.
    Kindly see Rule 80.2 of PCT Regulation:
    When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the
    day which has the same number as the day on which the said event occurred,provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.

    Also see The General Clauses Act, 1897:
    In any, (Central Act or Regulation made after the commencement of this Act, it shall be sufficient, for the purpose of excluding the first in a series of days or any other period of time, to use the word ‘from”, “and”, for the purpose of including the last in a series of days or any other
    period of time, to use the word “to”

    Now see the Patent Rule 20(4)(i): the time limit reffered to in sub rule(2) shall be thirty one months FROM the priority date as refferd to in Article 2(xi)
    Also it has been stated in Article 22 of PCT …FROM THE DATE OF PRIORITY.

    Now the earliest priority date in the 1st case is July 8, 2008, so for the purpose of computing 31 month time, the date of priority will be excluded and the time will expire on subsequent month having same numeric value i.e February 8, 2011. Likewise in 2nd case 31 month will expire on February 10, 2010. So the national phase entry could have been made on or before Feb8, 2011 and Feb 10, 2010 in 1st and 2nd case respectively.
    Hope now clear to you.
    Thanks
    yunus

    Reply
  5. AvatarSudhir Kumar

    I am surprised why this Nippon judgement was relied by the Controller which is on different issue altogether. For Request for examination deadline can not be extended as Rule 138 specifically bars it.

    But there is no such provision that bars discretion in other cases. There the limiting provisions should have been liberally construed. Controller should have instead relied on Nokia’s case; whihc is on similar facts.

    Reply
  6. AvatarSudhir Kumar

    In addendum to my earlier comment, would also like to state that in case no request for examiantion is filed, the Application becomes deemed to have been abandoned and Controller can not allow any application (even to amend the priority date)as it becomes functus offico.

    Reply
  7. AvatarShamnad Basheer

    Dear Anons and IP Watcher:

    Please note that this is not a forum for you to settle your scores with law firms or lawyers that you don’t like. We will not carry any comments relating to the quality of law firms or lawyers unless you back it up with credible evidence.

    Reply
  8. AvatarAnonymous

    Dear Shamnad:

    To back up my claim, while I have at least 5 cases where Remfry has messed client file for s.5 matters, I will give you one quick number
    1138/DEL/2001 (nice read)

    If you want more, look at a couple of decisions from Delhi Patent Office – mainly issued by Dr. Kardam and invariably with Remfry being on the other side with incorrect S.5 angle!

    IP Watcher

    Reply
  9. AvatarShamnad Basheer

    Dear IP Watcher:

    I’ve still not released your comment on 1138/Del/2001 unless you let us know as to how this case is evidence of negligence by a law firm re: dates etc. And if you’ve got more such cases, please do send us comprehensive information. You could also write up a guest post highlighting all of this (substantiating all your arguments with references to the cases and extracts)-and we’d be happy to publish. Thanks much.

    Reply
  10. AvatarAnonymous

    Dear Shamnad:

    The case I mentioned does not have the date angle mismanagement by Remfry. It pertains to professional incompetence on the S.5 matter – some thing that a large firm like Remfry should have been aware.

    And this is not an isolation – I know of Delhi Patent Office rejecting a couple of filings from Remfry because they did not use the S.5 route in the parent filing.

    I had mentioned Remfry initially on the competence angle when the comments here had moved on whether Anand is the only Firm that has competence issues.

    I will sign out now because I have given my proof and explanation – and the other cases are on IPAIR for people to see.

    You are free to edit all my comments and put a single comment – based on the inputs given or you can delete / stop them altogether – too much time on Remfry on my part.

    Regards,
    IP Watcher.

    Reply
  11. AvatarAnonymous

    Dear Rajiv Kr. Chaudhry and Yunus,
    You both are missing another thing. The Limitation Act. As per Limitation Act, the day from which the limitation is to be counted has to be excluded

    Reply
  12. Avataryunus

    Dear Anonymous:

    Thanks for your comment…but I intentionally overlooked limitation Act becouse PCT and Patent Act itself sufficent to clarify the matter. I added General Clauses Act as additional source only to define the word “FROM” for the purpose of computation of time as mentioned in the treaty and Act.
    By the way thanks again for your comment.

    Regards
    yunus

    Reply
  13. AvatarRajiv Kr. Choudhry

    Dear Yunus and Anonymous @ 9:21: You are both correct in determination of the exact date. However, I make it a point to docket the hard deadline according to the US system. It is prudent to tell clients about the earlier deadlines that are a day short, rather than to miss them altogether.

    Reply
  14. AvatarShamnad Basheer

    Dear IP Watcher:

    I appreciate your taking time out to send us a lead. However, the information that you sent in your most recent comment (which I have held back) is still not sufficient. you simply claim a problem with section 5. but what issue is this? As you know, section 5 does not exist on our statute book anymore. Do you mean to say that they did not file something through the mailbox route when they ought to have. Also if you have any of these decisions handy, could you please email them to me at shamnad [at] gmail.com. Thanks.

    Reply
  15. AvatarAnonymous

    Dear Rajiv/ Shamnad:

    The Patent office has today posted another decision on the docket management at big law firms … I hope this time you folks put it up.

    Please read this decision on IPAIR – it is 611-Del-2002

    NOT IP WATCHER , but IPAIR watcher 🙂

    Reply

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