June 2012: Controller’s decisions at the IPO

5 thoughts on “June 2012: Controller’s decisions at the IPO”

1. 

   Anonymous

   July 10, 2012 at 11:28 am

   Rajiv, one more statistics: The decisions for which no file has been uploaded is confined to just 4 controller’s!!

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2. 

   Anonymous

   July 11, 2012 at 1:09 pm

   Decision of the Learned Controller Sh.S.N.Sav with respect to patent application number 965/DELNP/2004 reflects that how confused our Controllers are. He had repeatedly talk about the requirement of filing Form 13, however he had never raised objection either in FER or in Hearing notice and finally he had delivered the final decision on the amended claims and rejected the application under section 3(k).

   Moreover according to him, even if the applicant amends the claims to satisfy the objection(s) raised in the office action, then the amended claims must be filed along with Form 13. May, I request all of you to kindly read this decision and share your comments, particularly on Form 13 issue.

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3. 

   Rajiv Kr. Choudhry

   July 11, 2012 at 3:12 pm

   Anon@6:09 PM: My opinion is that the reasoning is convoluted, at least with respect to section 3(k). That said, there is little machine specific discussion in your complete specification. So the 3(k) issue seems to be Okay.

   As regards Form 13, his primary issue seems to be that amendments should have been filed AFTER entry (National phase) and not WITH the entry.

   There is some support from PCT Article 19 for this stand. An amendment to the specification is possible under the Indian patent laws and rules after the application has been filed in India (under sections 57 and 59).The rationale for this requirement is that the date of a NP application is reckoned from the date of international application filed under PCT. Therefore, the contents of the complete specification in PCT and the Indian National Phase application should be SAME.
   No amendment is allowed at the time of filing (entry into national phase) the application, but the same is allowed after filing the application.

   There may be one other way if you reply to the Written Opinion (it is optional), amend the claims and include your comments in the Written opinion. And use the revised claims in your National Phase entry.

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4. 

   Anonymous

   July 12, 2012 at 1:51 pm

   Dear Rajiv:
   Thank you for looking into this decision. I complete agree with you what ever you have said. However the controller has raised requirement of Form 13 at two instances. My concern is specifically with regard to following para, where the Controller has referred to the amended claims filed in response to FER:

   “18/04/2011: The Patent agent for the applicant submitted the response vide their letter No. Nil dated 18th April 2011 to First examination report dated 24th July 2010. In response, the Patent agent for the Applicant gives statement under the heading of summery that the applicant has cancelled claims 1 to 5 and 14 to 18 while original claims 6-13 have been amended and renumbered as new claims 1-8.Newly amended claims 1 to 4 are based on original claims 6 to 9,while claims 5 to 8 are based on original claims 10-13.Applicant submits that no new matter has been added and all the presently proposed claims 1 to 8 are supported by the original claims and the specification as filed. This version of claims 1 to 8 overrides all previous versions of claims.
   Firstly it is necessary to analyze so as to determine whether
   Such amendment of claims as carried out by the applicant, are as per statutory provisions as laid down in the Patent Act 1970 and as amended Patent Act 2005 or not. In this connection it is brought to acknowledge that any amendment of applications and Complete Specification /Claims are required to be made as per proceedings laid down in Section 57 of Patent Act 1970 and as amended Patent act 2005 which have been illustrated in Chapter X of Patent act.”

   I agree that as per Indian Patent Act, any amendment in the national phase patent applicant can be filed only after entering into Indian national phase. However here the controller has raise issued against section 15. Section 15 allows applicant to amend the specification to address the objections raised by the Controller without filing any Form 13. Whereas, if the applicant wishes to amend his application suo moto then he must file Form 13. I can relate to this because in recent past the Learned Controller has raised same objection with various Agents.

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5. 

   Anonymous

   July 13, 2012 at 3:02 am

   I think anonymous @6.51 is correct. If the amendments are made in response to the objections put by the examiner, no Form 13 is required, if that meets the objections of the examiner. This is what has been happening for years. Form 13 is required for suo moto amendment.

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