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of the applications had become part of the public domain; and both applications were therefore, deemed to be withdrawn.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.
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.
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!!