Patent

Patent Office’s Answer to a Patent Agent Exam 2016 Question Challenged before the Bombay High Court


We had, earlier this year, brought to you a guest post by Dinesh Parmar, one of the candidates who wrote the Patent Agent Exam 2016, wherein he had argued that answers to two of the Paper-I Set C questions as provided in the answer key published by the Patent Office were incorrect. While answer to one of the two questions (i.e. Q. 49) was rectified by the Patent Office on February 2, there has been no clarification issued for answer to Q. 27. Aggrieved by Patent Office’s answer to this question (that carries 2 marks), Dinesh (who has failed the exam by only 2 marks) has recently filed a writ petition before the Bombay High Court challenging the correctness of the answer.

The petition (numbered WPL/915/2017), which is yet to be admitted, seeks a declaration from the court that the correct answer to Q. 27 is option (b) and not option (d) as stated in the Answer Key. It further seeks a direction to the Patent Office to accordingly correct the answer key, award marks to candidates who had marked option (b) as the answer and publish the reevaluated result within one week from the date of the order. Those of you, who are similarly aggrieved with the Patent Office’s answer and wish to join Dinesh in the petition, may contact him at 9825051147 or [email protected].

Question 27, that forms the subject matter of this petition, reads as follows:

Q. 27 As per the Indian Patents Act, a resident in India:

(a) Is free to file an application for patent in a foreign country without first filing an application for patent for the same invention in India.

(b) Can file an application for patent in a foreign country without first filing an application for patent for the same invention in India, only under certain special circumstances.

(c) Can file an application for patent in a foreign country only after filing a PCT application on same Subject matter.

(d) None of the above

The answer as per the answer key published by the Patent Office is option (d). However, Dinesh and many others argue that the correct answer is option (b). I am reproducing below the explanation provided by Dinesh in his guest post that we had published here.

“Section 39(1) of the Patents Act, 1970 reads as follows:

Section 39: Residents not to apply for patents outside India without prior permission. –

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

The answer to Q. 27 should be option ‘b’ in light of the words “except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller” in Section 39(1). The question seeks to ask if and when an Indian resident can file a foreign application without first filing an application for the same invention in India and Section 39(1) makes it clear that such application can be filed in cases where written permit has been granted by or on behalf of the Controller. This, in my opinion, qualifies as a special circumstance and thus the correct answer to Q. 27 is option ‘b’ and not option ‘d’ as stated in IPO’s official answer key.

Further, Q. 27 was asked in Patent Agent Exam 2010 as Q. 8 in Part A of Paper 1. Answer to the said question has been provided by two books: Patent Agent Examination by Sheetal Chopra – Registered Patent Agent, M.Sc, MBA and Dr. Akash Taneja – M.Sc, MBA, PG Diploma in IPR Law, Master Diploma in IP, Ph.D. and other one by Nitin Sharma – BE, MBA and LLB. Both of these books are very popular and known among IP professionals. In both books, the answer to Q. 8 is mentioned as option ‘B’ (PAE Book by Sheetal Chopra and Dr. Akash Taneja at Page 249 and PAE Book by Nitin Sharma at Page 241). Nitin Sharma has also provided explanation why the correct answer must be option ‘B’.

So, how can option ‘b’ be considered as incorrect answer to Q. 27? Option ‘b’ must be considered as correct and marks must be awarded to the candidates who marked ‘b’ as the correct answer to Q. 27.”

In the petition, Dinesh also relies upon the answer keys prepared by Muthu Sentilkumar and Roshan John (Research Associate under the IPR Chair at IIT Madras) & Dr. Sudarshan Rajagopal (one of the candidates who wrote this exam) that we had published on SpicyIP here and here. Both the answer keys state option (b) as the correct answer to Q. 27. The petition further refers to answers to Q. 50 and 51 in the FAQs published on the DIPP website here and the answer to Q. 24 in the FAQs published by the IPR Cell of NIIT Rourkela here, in support of the correctness of option (b) as the answer.

One hopes that the High Court admits the writ petition filed by Dinesh soon and directs the Patent Office to award 2 marks to candidates who have marked option (b) as the answer to Q. 27. This would enable the candidates who have failed the exam by only 2 marks on account of Patent Office’s incorrect answer, to qualify the exam and register as Patent Agents.

12 comments.

  1. Adv. Anil Kulkarni

    In my earlier post I had stated that the answer given by patent office is correct. I still reiterate that. Although answer (b) comes very near to the correctness, unless the special circumstances have been explicitly given the conditions given in sec. 39 cannot be assumed to be incorporated in option (b). “under special circumstances” is a very vague term and hence I still feel answer (d) is correct.

    Reply
    1. Adv. Dinesh Parmar

      Dear Adv. Anil Kulkarni,
      In respect of question 27, in I reiterate that “b” is only correct option – answer.

      I further reiterate that option (d) cannot be correct because of (b) is very near to the correctness. There is no restriction on resident Indian to file patent in foreign countries, they definitely can, and by providing fulfillment of requirements of Section 39 and that requirements can be considered as “certain special circumstances” or “circumstances”.

      In my last post, you commented that “I am also of the opinion that the options given have not been correctly drafted, if the paper setter were to be more precise and did not want to provide options which are confusing, he should have given the circumstances as provided in the Act.”

      So, I strongly believe that if the options given have not been correctly drafted by IPO, IPO cannot treat the answer (b) as incorrect.

      Even before filing WP, I communicated with many IP professionals and IP associations all are agree and confirmed that “b” is only correct option – answer.

      Well, at last one interesting question to all who believe that option “d” is correct. Please let me know if patent office’s claim “d” option is correct that means NONE can file patent application outside India without filing it the same in India.

      Then, what is worth of section 39 and Form-25?

      Reply
      1. Anonymous

        Hi, I just wanted to present one more view to the interpretation of the section and reading of the options. If you read section 39 again, the language is negative. It applies that you cannot file outside India. Whereas If we read the option (b) again.. it says.. “Can file an application for patent in a foreign country without first filing an application for patent for the same invention in India, only under certain special circumstances”. It is a positive language allowing you to file by saying.. can file an application for patent without first filing in India, which itself appears to be incorrect. If you read section 39 1(a) it says unless an application has already been filed 6 weeks before filing outside “”and”” 1(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked. Which suggests that it is mandatory to file first in India even if you are seeking permission to file outside, you disclose the invention to the Patent office first. In no circumstances you are actually allowed to file outside first. If we read 39 (2), it also talks about the application and not a permit. The permit is granted by the Controller after reading of the application. If B is selected as the correct option, it means the special circumstances allow you to file outside, without filing in India, which appears to be incorrect. Also, special circumstances means situations and not permit. If the option (b) would have read as under special permit, then could have been considered to be relevant argument. Anyways, its just one point of view, if the case is won, it will be great for others as well. All the best.

        Reply
        1. Adv. Dinesh Parmar

          Dear Anonymous,

          Thank you for your point of view, however, please note that disclosure of invention with FORM-25 does not mean filing of patent application in India. Here one has to disclose invention before Controller of Patents to get permission for filing of patent outside India not for grant of patent in India.

          Please read 39 carefully, it states as follows:

          Residents not to apply for patents outside India without prior permission.

          (1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless-

          (a) An application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

          Here it states that resident may file application after six weeks of filing of application in India without permission.

          (b) Either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

          Here there are two situations:

          Situation 1; here it is to be noted that if patent application is already filed and there is secrecy direction given by Controller then applicant cannot file patent outside of India due to such secrecy direction. However, upon filing of application no secrecy direction given to patent application or such secrecy directions have been revoked and more than 6 weeks passed than one can file application outside of India.

          Situation 2; Further, when Request for permission for making Patent application outside India is filed without filing application in India, the Controller will check whether application falls under Secrecy Direction Condition or not; if he finds that it does not than he will not give any direction and grant permission to file application without filing in India, than one can file application outside of India.

          Please read 39 (2) carefully, it states as follows:

          The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

          Here the “application” means an application to “grant permit” on Form-25 with brief description of the invention; which is for “Request for permission for making Patent application outside India” and this application has to be dispose of by the Controller within 21 days.

          So, B is only correct option, it means the special circumstances allow you to file outside, providing that “permission granted” to file patent application outside India.
          If special circumstances means situations and not permit then does it mean that NO one can file Patent outside of India without first filing in India?

          It is very clear and to be noted that when anyone wish to file patent outside of India without first filing in India which can be called as “special circumstances or situations”, the “foreign filing permit” is solution of such special circumstances or situations.

          Thus option (b) must be read as under special permit.

          Reply
          1. Anonymous

            Hi, appreciate your elaboration. But the question before the court can be about interpretation of the act and not the terms like circumstances. The general meaning of the term circumstances may be read as defined in dictionary. If I relate the term to the section when the section does not literaly use it, then its my interpretation and not what the section actually says. I had presented the point of view in this context. If the court was to consider the dictionary meaning for the term used in the question paper then it may not be considered as permit. The relation drawn between between the term and the section is a persons own interpretation, which is the reason such questions are framed during examination. Circumstances is not used anywhere in the act and the interpretation of that word read as permit is ones own and not as interpreted by law. Anyways, I do hope you win because even if the patent office was trying to frame such options for testing the interpretation skills of the candidates, I do believe the choice of words could have been much better and its unfair on the candidates.

  2. Fact Finder

    Well, best option for IPO is to declare both answers (b) and (d) as correct and should allot mark to candidates so that they can save their reputation and solve this conflict without further litigation issues.

    Reply
  3. IP Lawyer

    It is quite clear that referring the supporting information in respect to 100% correctness of option (b); everybody say and know that only answer (b) is correct answer and that has been published by respective persons in IP field on SpicyIP and respective websites. However, it is very sad that only Patent Office is not willing to accept their mistake.

    Not accepting such fault means that Patent Office don’t know Patent Law.

    The relying information provided by Dinesh is enough to decide WP in his favour. I suggest all candidate who required one or two marks should join WP as this case is to the point and open and shut case with all supporting information. Generally in such case court grant relief to only petitioner. So, anyone want to take chances join the WP.

    Reply
  4. Bhaskar Dutta

    This would enable the candidates who have failed the exam by only 2 marks on account of Patent Office’s incorrect answer, to qualify the exam and register as Patent Agents.

    While this is true and if High Court admits the writ petition filed by Dinesh, people who have secured 2 marks because of selecting (d) option and have marginally passed that paper, may have to strike off their names from Patent Agent register..

    Reply
  5. Anonymous

    What i feel that when it is question of interpretation of section or law and there are chances of more than one correct answer of such question, then why IPO framed such question and answer ? or why nor provided proper option based on said section law.

    Even, there is a one more question asked in PAE 2016 as follows:

    Date of recordal is same as the date of

    a. Filing of the patent application
    b. Grant of the application
    c. Recording the date of grant in the register of patent (Patent Office Answer)
    d. Date of the publication of grant of patent

    The patent Office’s answer is C which is “Recording the date of grant in the register of patent.” In section 43 of Patent Act there is nothing mentioned that date of recordal is same as date of the recording of grant in the register of patent.

    Instead, in Patent manual clearly mentioned in chapter 08.07.01: D

    When there is no pre-grant representation pending before the grant of Patent or when the Pre-Grant Opposition has been disposed of in favor of the applicant, the date of grant of patent is the date on which the patent is granted by the Controller in the file. The patent number is simultaneously generated. As the Patent Office has moved to complete electronic processing, the fact of grant of Patent by the Controller and the Patent Number is reflected on the official website on real time basis. The date of grant of Patent is the date on which the Controller orders the grant of patent in the file. Simultaneously, the patent number is generated and the fact of granting the patent is available on the official website.

    Further, Patent manual clearly mentioned in chapter 08.07.02: A

    On the grant of patent, every patent is allotted a serial number by the electronic system. A Certificate of Patent is generated in the prescribed format and an entry in the e-register is made simultaneously. In the present electronic system, the date of recordal of Patent in the Register of Patents is the same as the date of grant of Patent by the Controller.

    Further, Patent manual clearly mentioned in chapter 09.01.02:

    The date of grant of patent is the date on which the Controller grants a patent and since the granting of patent is now only done through electronic module, the date and time of grant is available to the public on a real time basis through the official website.

    Thus, here considering that granting of patent is now only done through electronic module Date of recordal is same as the date of grant of application.

    Reply
    1. Eric

      D is the correct answer because you cannot interpret “special circumstances” the way you want to and it’s not open to interpretation. you need to interpret it within the meaning and spirit of the patent act and special circumstances is still a vague interpretation

      Reply

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