Patent

A Patent Application Published 20 Years After Its Filing in India


We are pleased to bring to you a guest post by Vijaykumar Shivpuje. Vijay is a Patent Agent and an IP consultant. He brings with him more than 12 years of experience in IPR with multi-national pharma organizations and is also the owner of “VPATAPP”, a mobile app designed for patent professionals. He can be reached at [email protected]

 

A Patent Application Published 20 years After Its Filing in India

Vijaykumar Shivpuje

Indian Patent Office published around a  total of 41,000 (yeah, you read it correctly) patent applications in the following three journal issues in 2016:

  • Journal dated, 1st July 2016;
  • Journal dated, 26th August 2016;
  • Journal dated, 31st August 2016, which was a special issue.

While analyzing this large number of applications, it was found that not all of these applications were filed only 18 months back. Many of these applications were filed years ago but were not published earlier for reasons best known to the Patent Office.

One such interesting case is highlighted below along with its analysis:

The application 327/MAS/1996A was filed in India on 30th May, 1996. The PCT filing date was 29th March, 1996. This application got published only on 31st August, 2016. That’s correct! 20 years after filing of the application. That means, after expiry of the precribed term of the patent (if granted).

A snapshot of the same can be viewed here.

Now let’s look at the statutory requirement in respect of publication of patent applications in India:

Patents Act, 1970:

“Section 11A. Publication of applications:

(1) Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.

(2) The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of subsection (3), the Controller shall publish such application as soon as possible.

(3) Every application for a patent shall, on the expiry of the period specified under sub-section (1), be published, except in cases where the application –

(a) in which secrecy direction is- imposed under section 35; or

(b) has been abandoned under sub-section (1) of section 9; or

(c) has been withdrawn three months prior to the period specified under sub-section (1)

(4)..(7).

Patent Rules, 2003:

24. Publication of application:

The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier.

Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.

24A. Request for publication:

A request for publication under subsection (2) of section 11A shall be made in Form 9.”

So, in a nutshell, as per the Patents Act and Rules, every patent application is required to be published after expiry of 18 months from the date of filing or priority of the application (whichever is earlier). However, as stated above, there are various applications that were filed between 1996 and 2016 but were published only in the aforementioned three journal issues in 2016.

Warning to all the patent searchers: Look out for these three journal issues for the Indian patent applications which were published only now but filed long back. What would be the course of action if you have actually cleared an invention for which your searches did not reveal any existing equivalents? I could actually trace a few applications which were really critical for the FTO (freedom to operate) analysis for some of the products cleared earlier.

Questions raised:

  1. Why was this application never published earlier?
  2. What made the patent office publish this application after such a long gap?
  3. What message India as a country and Indian patent office wish to give to the world by this kind of publication after 20 years?
  4. What about the privileges and rights of the applicant under Section 11 A(7) of the Patents Act?
  5. What should be the timeline after which we can presume that no equivalent of an invention claimed in a particular patent application is available? Or do we need to wait till the expiry of the 20 years like in this case?

I would like to know expert comments on the significance of this publication or similar examples elsewhere in the world.

Disclaimer: The opinions and comments in this post are personal.

Image from here

9 comments.

  1. AvatarAnonymous

    Such application already been expired. So may be to bring the technology in public domain Patent office has published such application .

    Reply
  2. AvatarKrishnaraj

    Well a quick check on the legal status of this application (from the patent office website) says – ” Application Withdrawn”.

    I am no expert in the Indian patent law, but something in me tells that it has to do with “withdrawal”, which you have pointed out in the post (section 11 (A) (3) (c) of the Act). However, I could not also say for sure if “secrecy” i.e., section 11 (A) (4) of the Act was part of it or may be I should give section 11 (B) (4) of the Act a shot.

    I may never know. Good weekend people 🙂

    Reply
  3. AvatarPankhuri Agarwal Post author

    As far as I understand, even if the application was withdrawn at some point, as per section 11A it should have been published within a month from expiry of 18 months from the date of filing/priority (and not now) unless the withdrawal was made three months prior to expiry of the 18 month period (as provided under S. 11A(3)(c)). If the withdrawal was so made, then as per Section 11A(3), Patent Office was not required to publish the application at all; then why now after 20 years? In my opinion, this delay in publication can’t have anything to do with withdrawal of application. But I’m no expert, please feel free to correct me if I’m wrong.

    Reply
  4. AvatarKrishnaraj

    lol, sorry, I was not being serious there and hence, threw all the options out.

    I understand section 11 (A) (3) (c) of the Act the same way you do.

    But…

    [I am quoting from your comment:]

    “If the withdrawal was so made, then as per Section 11A(3), Patent Office was not required to publish the application at all;”

    Where do you see that? I agree that they’re not required to do so, but have you considered the effect of “treated to be withdrawn by the applicant” under Section 11 B(4) of the Act? [I asked myself if I would give it a shot :)]

    I am pasting section 11B (4) here for the ease:

    “(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant: Provided that— (i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and (ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.”

    So my question to you is:

    What if the applicant did not file a request for examination and consequently, the application was “treated as withdrawn”?

    “anytime after the filing and before the grant” (from sec. 11 (B)4 of the Act) – this would include “publication” no?. Umm.

    So, after all, section 11 A (3) of the Act does not apply here. Would you still say -that the office is not required to publish? I don’t understand why they did it, but in my opinion, we are asking a wrong question.

    This publication does nothing in effect [did you notice in the screenshot you’ve provided WO publication number?].

    Reply
  5. AvatarPP

    Why was this application never published earlier?

    Section 143 of 1970

    What made the patent office publish this application after such a long gap?

    IT department error I think

    What message India as a country and Indian patent office wish to give to the world by this kind of publication after 20 years?

    Follow patent act and get agent or at least read read thr communication emails

    What about the privileges and rights of the applicant under Section 11 A(7) of the Patents Act?

    It came into force at later date see section 1

    What should be the timeline after which we can presume that no equivalent of an invention claimed in a particular patent application is available? Or do we need to wait till the expiry of the 20 years like in this case?

    Agent need to followup at patent office in writing before expiry of statutory time limit or when reaching deadline.

    Reply
  6. AvatarGopakumar G Nair

    Indian Patent Office has gone through various phases and seasons. Publications moved on to the Official Patent Office Journal Platform in Jan 2005 from the original Gazette printed format. Working of the Patent Office was revamped only in recent years , past 2009 and more recently in 2016. The DIPP and Patent Office ( CG) need to be complimented for responding to the request from Patent Attorneys to PUBLISH all UNPUBLISHED Patent Applications. It needs courage and commitment to admit and rectify mistakes.

    Reply
    1. AvatarPA Candidate

      Dear Sir, I respect you lot as your are one of the Patent Attorney with rich experience in IP.

      Here, i would like to comment that recently Patent Office has created controversy over VIVA Exam marks in Mumbai as well correction answer of Q 27 and Q 49 wherein they have admitted their clerical mistake for Paper Set C for Q 49 only. IPO didn’t replied or provided any clarification in respect of Question no 27.

      I am sure you might be come across this issue. So, what do you think about this question as well such behavior of IPO ?

      Reply
  7. AvatarDr. Shiv Gupta

    Even if there is no application for publication the controller is bound to publish the application.

    11(2) and 11(3)

    But there is no time period prescribed

    Reply

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