With his 2nd submission to our SpicyIP Fellowship applicant series, Aabhas Kshetarpal brings us a very interesting post looking at a recent decision of the Delhi High Court on the interpretation of section 39 of the Patents Act. He points out that the decision means that applicants filing a PCT application by way of a section 39 clearance may inadvertently delay their international filing date. He then goes on to suggest that the Court’s interpretation of the section may be incongruent with the Act.
Aabhas’ first entry for the fellowship, titled “Google Books in the Clear: The Appeal Process a Mere Formality?” can be read here. [Readers interested in finding out more details about our SpicyIP Fellowship applicant series can click here.]
Seeking Clearance under Section 39 of the Patents Act? Think Again!
By: Aabhas Kshetarpal
A Division Bench of the Delhi High Court, on the 19th of December, 2014, dismissed an appeal against a rather interesting judgement on the interpretation of Section 39 of the Patent Act, which has largely been ignored by the judiciary. The Court held that an application under the Patent Cooperation Treaty, even if it made to the regional office in New Delhi (RO/IN), would be treated as an application made “outside India” under the ambit of Section 39. This post would elaborate on position of law with regard to Section 39 and the controversies stirred up in view of the current finding.
Before we delve into the impact of the said decision on the complexion of Section 39, a brief introduction to the factual matrix of the case is in order. Anand and Anand, the representatives of Mr. Puneet Kaushik, on the 14th of September, 2012, filed a PCT Application coupled with an application under Form 25 of Act for a foreign filing licence to the RO/IN. However, the said applications were enclosed within the same cover letter.
The Patent Office refused to accept the two applications together, in view of the fact that the application under Form 25 and the PCT application are “dealt with by two separate counters in the office”, the former being dealt with by the General Cash Counter and the former by the PCT Division. The office, accordingly, treated the application as Section 39 application and granted a foreign filing licence on the 27th of September, 2012.
Consequently, Mr. Kaushik filed a writ petition in the Delhi High Court claiming the 14th of September as the international filing date. The petitioner also sought a declaration affirming the original application as the application under the PCT. On the preliminarily point of contention, the Court held that there was no deficiency in the PCT application merely by reason of the consolidated filing of the PCT and Section 39 applications.
Therefore, the Court was left with the determination of only one aspect of the controversy, the relevant date for international filing. The international filing date would be the 14th of September, in case the Court was satisfied that the Section 39 clearance was not required to be filed in instances where the PCT application was filed in the RO/IN. As per this reasoning, the application at RO/IN would not constitute an application “outside India” and accordingly, the rigours of Section 39 would not be attracted.
However, as opposed to the above approach, the Court held that the international filing date was 27th September, 2012, the date on which a foreign filing licence was issued. Consequently, the Court held that a PCT application, even if the same has been filed in RO/IN, would constitute an application “outside India” under Section 39. In order to advance the said reasoning, the Court relied on Article 11(3) of the PCT and stated that “an international application serves the purpose of applying not only for the State in which it is received, but in all the contracting States mentioned in the request”. It further went on to hold that, bearing in mind the scheme of the PCT, the RO/IN primarily acts as an office which receives applications which are to be transmitted to the concerned authorities such as the International Bureau and the International Search Authority for further processing.
The Division Bench, while upholding the decision in appeal, added an extremely interesting observation to amplify the reasoning of the Single Judge. The Court pointed out, that “if the appellant had adopted the course of first filing an Indian application for patent and on expiry on six weeks, an international application were to be filed then the international filing date would have dated back to the date when the Indian application was made.”
Even though, prima facie, the text of the Section 39 seems to mandate that a foreign filing licence must be obtained before the filing of a PCT application, this would cause a detriment to every applicant filing a PCT application via the RO/IN. In such cases, the international filing date would only be granted after the Section 39 clearance is obtained. On the other hand, an applicant who first files for an application domestically, would have the right to claim initial filing date as the international filing date.
This approach seems to discriminate between the two methods for filing a PCT application under the Act. In my opinion, this type of discrimination cannot be read to have been envisaged under the scheme of Patent Act. In case the Court held that the PCT application would be subject to a clearance under Section 39, while retaining the international filing date to the date of filing for such a clearance, it would have harmonized Section 39 with the scheme of the Act. This approach would be analogous to the methodology of calculation of international filing date in cases where a domestic application is initiated first and the requisite waiting period of 6 weeks is observed.
Be that as it may, for now, any applicant pursuing a PCT route should be aware of the fact that filing a PCT application by way of a Section 39 clearance may lead to a waste of, in many cases, extremely precious days, with regard to the international filing date.
Can some one please explain how an applicant can get the PCT filing date back to the date of indian filing ?
“if the appellant had adopted the course of first filing an Indian application for patent and on expiry on six weeks, an international application were to be filed then the international filing date would have dated back to the date when the Indian application was made.”
Hi Srinivas,
I would request you to refer to Section 7(1A) and 7(1B) of the Patents Act.
They states as under:
” Section 7: Form of application:
—
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete
specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.”
As a consequence of Section 7(1B), the international filing date would have date back to the date when the Indian application was made.
I hope this adequately answers your query.
Also, Happy New Year!
Dear Aabhas,
Thank you so much for taking time in clarifying.
As mentioned in your reply, I’m trying to understand the logic through Sec 7 (1A) & (1B).
Thanks and also, I wish you happy new year.
Hi Srinivas
It simply means that you get the priority date of the earliest filed application, which in this case, would be, an application filed in India.
I think there might be some misunderstanding regarding sec 7(1A) & (1B) at least for me. In my view this section pertains to the application having priority in some other country and then a pct being filed and then a corresponding application being filed in India, then that indian application will get the international filing date & not that earliest priority date. For eg an application is filed on 1.1.2014 in US and on 1.6.2014 as pct then if that application will be filed in india than the application will dated back to 1.6.2014 & not on 1.1.2014. Any correction on the above will be appreciated. I am still wondering if there be any case or any circumstance when the priority date and international filing date are same with india as priority country.
Hi Rohit,
I understand your point. However, in my opinion, a plain reading of Section 7(1A) seems to include applications filed first in India as well. This also seems to be the approach of the Court. Can you please elaborate on why you think it should be given such a restricted reading?
With regard to the second leg of your query, if the reasoning of the Court is to be adopted, and a plain interpretation is given to the provisions at hand, any application filed in India, followed by a PCT application filed in RO/IN, would have the same international and domestic filing date.
I am not trying to restrict any provision. I am trying to point out that this provision is for the pct application designating India and coming to national phase in India.
I am still trying to understand the concept of same priority date and international filing date with India as priority country. Even if india is a receiving office, section 7(1B) restricts the office for providing any international filing date or number because the application cannot be “processed” in the absence of prerequisite of sec 39. (Also 5.10.9 draft manual).
We’ve also received this comment from a reader who wishes to remain anonymous:
“Filing of a PCT application gives the applicant of that application to file the same application with the same priority in any of the PCT countries (foreign filing) within the prescribed time period of 30/31 months from the date of priority. Thus filing of a PCT application amounts to filing of a patent application in any of the PCT designated countries only after that application is filed in the patent offices of those respective PCT countries.
Thus filing of a PCT application at RO/IN does not immediately amount to filing of an application in India. It is considered as a filing of a patent application in India only after the said PCT application is filed at any one of the Patent Offices by paying the requisite fees for a complete specification. Such filing of PCT application in India is called National phase entry of the said application. Section 7 (1-A) also refers to an international application under PCT designating India.
If the application has been first filed in India either as a provisional/complete specification than that date will be considered as the priority date of that application but it will not be considered as International filing date for that application. In case the applicant is not interested in filing patent application in India, he can proceed to file a PCT application at any of the RO in India. The same being akin to filing of a patent application outside India, it attracts the provisions of Section 39.
Section 39 places a constraint on all persons residing in India to seek the permission of the Controller before filing any patent application outside India.
It is important to note that the date on which the PCT application is filed amounts to the International Filing date for that application and the 20 years period for that application starts from that date.
It may be explained by the below example.
Filing of provisional/complete specification in India on September 14, 2012 will amount to priority date of that application.
The PCT application can then be filed only on October 26, 2012 (six weeks from date of filing in India) and if it is filed on that date than that will be the International Filing date for that application. The expiry date of that application in other PCT countries will then be October 26, 2032.
The expiry date of the application in India will be September 14, 2032 if he continues with the provisional/complete application. If he abandons that application and proceeds to file an application through PCT in India than the expiry date of that application will be October 26, 2032 as the International filing date will be considered from the date of PCT filing.
If applicant who is a resident of India chooses not to file an application in India than he has to seek permission from the authority (Controller) under Section 39 by filing Form 25. Only after receiving the permission he can proceed to file the PCT application. So if the applicant applies for Form 25 on September 14, 2012, and he receives it on September 21, 2012, than he can file the PCT application on September 21, 2012. Than the said date will be the International filing date as well as the priority date for that application.
Immediately after filing the PCT application on September 21, 2012 and proceed to file in India on September 22, 2012, still the term of 20 years for that application in India will expire on September 21, 2032. “
Hi,
I agree with everything stated in the comment, barring one sentence, being:
“The PCT application can then be filed only on October 26, 2012 (six weeks from date of filing in India) and if it is filed on that date than that will be the International Filing date for that application.”
I believe that pursuant to a bare reading of Section 7(1A) and Section 7(1B), and the interpretation given to it by the Court, the international filing date would 14th September, 2012.
I would request you to elaborate on the reasoning for deeming October 26, 2012 as the international filing date.
(Received from anonymous above in response)
“Section 7(1a) specifically refers to entry of an international application into India under the PCT provisions and such applications are referred to as NATIONAL PHASE ENTRY of the international application in designated countries/India.
You may note that an Indian complete/provisional application becomes an International application only when it is filed as PCT application and as per the Patent Act provisions such International application can be filed only after 6 weeks from the date of filing of the Indian application.
Section 7(1B) The filing date of an application referred to in sub-section (1A) —- shall be the international filing date accorded under the Patent Cooperation Treaty.
Article 11 (1) of PCT specifically states that the Receiving Office shall accord as the international filing date the date of receipt of the International application.
Thus Section 7(1B) read with Article 11(1) of the PCT indicates that the applications filed under Section 7(1A) have the filing date on which the PCT application was filed.
*As far as the decision of the Divisional Bench of Delhi High Court is considered it may be stated that the priority date and not the International filing date would date back to the date when the Indian application was made.*
Hopefully the above explanation answers your question.”
Hai Swaraj,
I also believe that the priority date can be dated back and not the International filing date.
i.e, the PCT application filed on 27’Sep 2012 can not get the filing date of its earlier filed Indian application 14’Sep 2012.
However, the below excerpts from the court decision contradict this understanding.
“if the appellant had adopted the course of first filing an Indian application for patent and on expiry on six weeks, an international application were to be filed then the international filing date would have dated back to the date when the Indian application was made.”
“On the other hand, an applicant who first files for an application domestically, would have the right to claim initial filing date as the international filing date.”
Does it mean, an International application filed on 17.02.2015 can get the filing date of its earlier filed Indian application i.e 01.01.2015 which is filed six weeks before???
Dear Aabhas and Swaraj,
I agree with the seond anonymous response (January 04 2015) which states that the filing date of an international application via section 39 should be the date on which the permission has been granted (september 21 2012) and not on the date on which Form-25 was filed requesting the permission (september 14, 2012) which is what section 39 states and the same thing is asserted by the court judgement in this case. please correct me if i am wrong.
Also the priority date and the international filing date should be same logically, otherwise the international application would be rejected on the grounds that it was filed after the domestic application and thus lacks novelty. Also an international application should ideally expire before or on the same date as the application of which it claims priority. Please correct me if i am wrong and elaborate with an example as this is a small but very important issue which by just looking appears to be simple, but on a thought it is a bit complex issue
It is part of companies as why they would not want to file a domestic application prior to the PCT application. If the company do not want to file a domestic application, they may apply for an FFL while the drafting of application is in progress (obviously time required for drafting is more than for obtaining FFL). If there is no special reason for not filing domestic application, the company can file a domestic application followed by a PCT application. The cost of filing the domestic application is same as the cost of applying for FFL, however, additional costs may be incurred if the claims are over 10 and pages are over 30. In such case FFL may be applied to save cost and decision is made that the protection is not required in India.