Patent

Controller’s Decisions: Summary January 2012


This post provides a summary of the Controller’s decisions issued in January 2012.  The general trend of more refusals than allowances continues. I would not take names but some controllers have not given a single allowance since a long time.  And only time would tell whether at least one applicant is able to convince them to take a contrary view and issue an allowance, rules and law permitting.  There are quite a few interesting decisions related to sections 3(k), divisional filings, and deemed withdrawals, and we will carry more detailed posts on a few of these decisions in separate posts.
Some of you have written to me individually asking me about the upcoming exam (whenever it might be held) and it’s preparation.  I generally mark these posts with an exam tag and my advise is: Prospective exam takers should read these decisions and see the application of the law/rules in action. For example, it is very helpful to see why one 3(k) decision is allowed and other refused.
APPLICATION # 

APPLICANT 

DECISION 

SECTION/RULE 

CONTROLLER 

BOEHRINGER 

Refused 

3(d), 2(1)(j) 

N.R.Meena 

CSIR 

Deemed withdrawn 

R11B 

N.R.Meena 

ENI .p.A. 

Time extended 

77(1)(g) 

Shah Alam 

BAXTER 

Refused 

2(1)(j/a); 10(4b) 

Dr.Rajesh Dixit 

BRISTOL-MYERS 

Refused 

10(4) 

Dr Subramaniyan 

I. N. S. E. R. M. 

Refused 

15 

Shah Alam 

TELECOM ITALIA 

Allowed 

3(k) 

B.P.Singh 

TRIDENT SCIENCES 

Refused 

15 

Shah Alam 

NETOMAT,INC., 

Refused 

3(k) 

B.P.Singh 

LES LABORATOIRES 

Refused 

3(d), 3(e) 

N.R.Meena 

Dr. Reddy & Anr. 

Refused 

2(1)(j), 15 

S Thangapandian 

EMSENSE 

Refused 

11B(4) 

Dr.K.S.Kardam 

CARLOS, ALBERTO 

Refused 

11B(4) 

Dr.K.S.Kardam 

NAPO PHARMA 

Refused 

3(e), 15 

Dr Subramaniyan

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).

15 comments.

  1. Anonymous

    I will be happy to know the views of readers with respect to the order passed by Dr. Kardam in the two cases on Section 11B(4).
    At least I do not agree to the reasoning given by him. He has tried to find out all the possible things to refuse the application even though the High Court has opined that there is definitely a confusion. In this sort of case where admittedly there is confusion, the benefit should definitely have been given to the applicant rather than refusing which has resulted in extinguishing the right of the applicant for all times to come.

    Admittedly the website has been corrected on 10th Nov., 2011. I ask what was the need to correct the website at this juncture, if he was to hold that the same has nothing to do with the law (read Patent Rules) and that the guidelines cannot over ride the Rules. I ask why these guidelines are at all published if they have no sanctity at all. My view is that at least till the confusion was there, the applications should not be refused. The refusal should have been with respect to the future cases after giving the reasonable time gap for the applicants who were actually misled by the guidelines. Mind it that they are the guidelines published by WIPO and not any Tom, Dick and Harry.
    I also do not appreciate the complete burden that Dr. Kardam he has put on the agent. There is too much of expectation from an agent. The fact that the same applicant through the same agent had filed form 18 in time cannot be a ground to refuse the present Form 18. BY filing form 18, the person is concerned with only the case involved and not any other case, if the person has in mind that he still have time to file form 18, why this fact of filing form 18 in another case be a hindrance in filing form 18 in the present case depending upon the guidelines of WIPO. May be the applicant had not even given a though at that time that he should file form 18 for this case as well particularly when the time for filing it is still there. Filing of form 18 involves expenditure/financial implications and the inventors take their time to decide whether to incur the further expenditure and if yes, when.
    In fact my view is that the High Court itself should have accepted the writ petition and directed the Patent Office to take on record the form 18 and proceed further in the application in stead of remanding back the matter to the Patent office for consideration. We know how bureaucrats work in India.

    Reply
  2. Anonymous

    Anonymous @ 9:36AM: It is extremely interesting to contrast the decisions you have discussed with the ones given by Dr. Kardam in the cases of Lalit Mahajan. See last year’s summary of controller’s decisions post by Rajiv.

    Reply
  3. Anonymous

    I find the first comment very silly and misguided, trying to hide the Agent’s shortcomings.

    Segmented Ignorance of law is not an excuse.

    The Indian agent was a qualified professional, he should be relying on the Patents Act as published and various Rules as published in the Gazette.

    I am amazed on why the gun is being shot from the Applicant’s shoulders … as to him seeing on WIPO site etc… the fact is the foreign Applicant hired an Indian agent. This Agent relying on some foreign site and not looking at the statute book here is downright unprofessional.

    The Indian Agent should be guiding the Applicant and not let the foreign applicant be guided on WIPO based publications which are different/ incorrect from published Indian statute.

    Finally, the Agent’s stand that the “Applicant” relied on WIPO site is also incorrect because this same Applicant + Agent combo (apparently) filed the documents for another file, in time – this time not relying on WIPO, in the same time frame.

    Reply
  4. Rajiv Kr. Choudhry

    Anon @ 6:57 PM: Yes. To maintain transparency, it is necessary to show names with the decisions. Even if I do not show, the decisions themselves show the names.
    What is your real issue with showing the names here?

    Anon @ 8:49PM: I agree and would be doing a post on 1567 shortly.

    Reply
  5. Anonymous

    Anonymous at 10.39 PM.
    I think anonymous @9.36 AM has already given the detailed explanation with respect to the role of agent. That covers even the same agent. Kindly go through the same carefully.
    Rajiv, please cover this decision in 1567/DELNP/2003 in your post as promised.

    Reply
  6. Anonymous

    Dear Anon. 9.36 am/ Anon 3.57 pm:

    I had read the 9.36 post in detail.
    I still have the same question – why is an Indian patent agent crying ‘spilt milk’ over some irrelevant/ completely incorrect information that was/is posted on the WIPO site.

    The Indian agent has been practising before the IPO for X number of years, s/he has passed the Agent Exams’ and is not required to rely on the WIPO website. His advise to clients has to be based on the information and law contained in the Gazette of India publications and any circulars coming out of the IPO.

    Saying that the client saw the WIPO site (which is what the order mentions – client and not agent), then
    a) what advise did the agent give to the client in the first place?
    b) If we assume that foreign clients who rightfully hire Indian lawyers/ CAs/ CSs etc should continue to read non Government of India websites and the Indian professional MUST keep his mouth shut while mistakes/ lapses happen.

    I have said in my first response as well and now again – please tell me why did the Indian agent simply not write a short email to client saying that “the WIPO website may be wrong (and importantly is NOT binding on IPO) and that the Indian law is >>>>”

    Your response / 9.36 response also does NOT answer why this same client + agent combination did the right filing for another of their applications – was the WIPO ‘knowledge’ not on their table at this 2nd filing?

    Reply
  7. A Simple Equation

    @anon: There is “too much burden and expectations” from patent agent? Patent agents are required to keep themselves abreast of the patent laws and amendments. If they can’t do that, then what are they getting paid for? You talk about conflicting guidelines.. I don’t feel so. Besides, patent office issues Application Filing Receipt (AFR)when a patent application is filed and and under note 4 of the AFR, it is clearly indicated that “if you wish to get you application examined, you should file a request for examination in Form 18 within 48 months from the date of priority or date of filing, whichever is earlier”

    http://patentsind.blogspot.in/2012/02/conflicting-guidelines-between-pct-and.html

    Reply
  8. Anonymous

    A Simple Equation,

    Many thanks for making the right statement… I have been facing bad patent agents (and good ones as well) since last many years.

    If an Agent is not upto mark on his knowledge, what professional is he?

    Anon at 5.53 pm

    Reply
  9. PG

    An agent is required to act on the demands made by the client..he may or may not put in any effort when not specifically asked to do so by the client. Anyway there is no need to get in to these menial morality issues here (good/bad agent) as there really does not exist any such issue. BUT what is important to note is that why are any guidelines published on the website at all when no real legal sanctity is being accorded to them.

    Reply
  10. Anonymous

    PG:

    Would you mind giving your views on whether a qualified Indian patent agent/ attorney should be looking at WIPO site for professional information OR should he rely on the Act and Rules as published in the Gazette of India??

    Reply
  11. Anonymous

    what i believe is that sometimes the applicants miss a deadline, then they blame the agent…..even when they have the information….is just a blame game..but the fact of the matter is that a deadline has been missed and the dealy must be condoned..just like any other field of law.but does patent office has such a harsh rule…no extension…even they do not provide us the documents on time

    Reply

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