In a recent decision issued by the IPAB, the Board in yet another excellent decision issued by Justices Sridevan and Parmar, has suggested to the patent office to implement a revised numbering scheme for applications. The decision was issued in a case to direct the patent office to accept a national phase application filed with less than the prescribed fees. (Decision).
In my view, the patent office has ducked a major issue for now: receiving extra fees from applicants who enter national phase with a reduced set of claims than at the international application filing stage. This extra money goes to the coffers of the patent office, and the applicants have to pay this fees even when there is no examination of the cancelled / deleted claims. This issue is not just limited to collecting extra fees for cancelled claims. Our patent office charges higher fees wherever possible – and a possibility always remains – invitation for applicants to litigate.
For example, patent office charges arbitrarily extra fees for gene sequences applications (post), patent office charges higher fees for providing information under the RTI Act (post), and this case (patent office charges fees for cancelled / deleted claims). These instances together show that the patent office wherever possible collects extra fees from the public. The logic seems to be – collect extra money where possible – but the extra money collected is not applied for the benefit of the public, or it is not seen that it is applied for the benefit of the public. After all, patents are granted because they serve a public purpose / policy, yet when it comes to the application of funds, the patent office applies a same yardstick for all – pay and play – no pay no play. One concrete example is the RTI applications requesting information: patent office can easily provide the information under the RTI Act @ a lower fee but it chooses to charge a higher fee under the scheme of the patents act.
Facts: An applicant had submitted a PCT application with 20 claims. At the national phase entry stage three claims were cancelled, and the applicant tried to the application with the fees for 17 claims only. This process was done before the expiry of the 31 month deadline. However, the controller returned the application on the ground that the fees was insufficient.
Issue: Aggrieved by the Controller’s decision returning the application, the applicant approached the IPAB.
Applicable Law: Under section 138 (4) of the Patents Act, 1970, (hereafter “Act”) a PCT application designating India has the effect of filing an application for patent under section 7, 54 and 134 and the title, description, claims, abstract and drawings, if any, filed at the international application stage are to be taken as complete specification for the purposes of the Act. Section 139 provides that all the provisions of Act apply to a convention application.
Under the applicable law, the applicant was required to file the complete specification as filed in the international application. This application contained 20 claims. According to First Schedule (Rule 7 of the Patents Rules (hereafter “Rules”), a fee of Rs.1000/- is prescribed for filing Form 1 and an additional fee of Rs.200/- for each claim in excess of 10 claims is to be paid.
In this case, the applicant should have paid a fees of Rs.3000: Rs. 1000 for FORM 1, and additional claim fees @ Rs.200 for 10 extra claims. However, the applicant paid only Rs. 2500. And the Controller had returned the application on the ground that the fees were insufficient.
Conclusion: Allowing the appeal from the applicant, the IPAB directed the Controller to take the application on record. Because “the Controller’s rejection of the application on the last date only on the ground of insufficient of fees appears to be unreasonable since the appellant has not been given an opportunity to rectify his mistake. The patent application may fail for other reasons but not because perhaps by a miscalculation or arithmetical error, the correct fees has not paid. In this case there are the following factors which persuade us to interfere. 1) The rejection of the application was beyond the 31 months making it impossible for the applicant to set the lapse right. Therefore, we must allow the appeal.”
I think it is wrong on the part of the patent office to ask for the fee for the 20 claims. If I do not want three claims out of 20 in the original PCT claims, then insisting me to pay for all the 20 claims is unreasonable.
Secondly, it has been seen that the Government officials always insist upon payment of more money as if the officials are going to be rewarded for that . If one chooses the route of RTI then the patent office cannot compel the person to go through the Rules and apply for the copy through the Patent Rules. The difference is that if one chooses the RTI route, then the copy supplied would not be a certified copy but would be just a copy. Getting copy as per the Patent Rules would give the certified copy, which one may not be interested. I am reminded of a judgment which says that the RTI is superior to the specific law (like here Patents Act). Hence even though there is procedure to obtain certified copies under Patent Rules, yet one can get copy through RTI (uncertified copy).
In TM office, the officials are not asking for the Trade Mark Rule route for the copy, but they are making money for the exchequer by illegal means. For example they are asking for TM-50 when the address of the agent on record has changed even if the registrant is not a foreign company. TM-50 is applicable only when there is change in agent in respect of a foreign registrant who has no place of service in India. Perhaps the officials will get rewards for illegal insisting upon TM-50.
Yet another example of how applicant unfriendly our Patent Office is.
//The provision Applicable Law: Under section 138 (4) of the Patents Act, 1970, (hereafter “Act”) a PCT application designating India has the effect of filing an application for patent under section 7, 54 and 134 and the title, description, claims, abstract and drawings, if any, filed at the international application stage are to be taken as complete specification for the purposes of the Act. Section 139 provides that all the provisions of Act apply to a convention application.//
The purpose of signing an International Treaty like the Paris Convention or the PCT was that the patent filing process is made simple and harmonized internationally. The legislative intent was to reduce the stress both on the applicant as well as the Patent Office. It meant that what an applicant files with the International Office should be considered as the complete specification under the Indian Patents Act. An application should not be rejected merely on the basis that he has made a lesser payment of fees or has deleted certain claims he does not wish to have examined by the PTO. Penalizing an applicant in this fashion is contradictory to the essence of the International Treaty itself.