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.