Grounds of Opposition [s.25] v. Grounds for Revocation [s.64] under The Patents Act, 1970

Contentious matters under the Patents Act, 1970 are governed primarily by Section 25 and section 64 of the Act. These two sections enumerate the specific and exclusive grounds available to challenge a patent/application for patent under the Act. Here I would like to draw out a contrast between these two seemingly similar set of provisions (sets of grounds). As per the Act, there are three ways to place a challenge against a patent / application for patent – pre-grant opposition; post-grant opposition; and revocation of patent. A pre-grant opposition could be filed by any person from the date of publication of the patent application uptil technically the date of grant of patent on any of the grounds enlisted in section 25(1). The post-grant opposition could be filed only by any ‘person interested’ within one year from the date of publication of the grant of patent on any of the grounds enlisted in section 25(2). Apart from the fact that a pre-grant opposition could be filed by ‘any person’ and a post grant opposition could be filed only by a ‘person interested’, the grounds available for pre-grant [25(1)] and post-grant opposition [25(2)] are ditto. I therefore will treat these grounds available for opposition as a single set of grounds against the set of grounds of revocation available under section 64. The revocation can be filed by any person interested or Central Government from the date of grant of patent till the expiry of patent. Section 25 provides for 11 grounds [(a) to (k)] of opposition whereas section 64 provides for 17 grounds [s. 64(1)(a) to (q)] for revocation of a patent (see here for the The Patents Act, 1970 and The Patents Rules, 2003). Here I will try to chalk out a comparative analysis among these two sets of available grounds and will also try to deduce the possible reasoning behind introduction of such changes.    

COMPARISON:

1.      Section 25(a) provides for wrongful obtention of the ‘Invention’ (or any part thereof) as ground for opposition. This ground probably touches section 6 of the Act which identifies the ‘Persons entitled to apply for patent’ viz. true and first inventor(s), its/their assignee(s) or legal representative(s). There is however a situation in which the applicant doesn’t lie within the ambit of section 6 as a person entitled to apply for patent and still has not wrongfully obtained the invention i.e. where the person is although a true inventor but not the first one [note the requirement is ‘true and first inventor’ (which raises some doubt as to whether India is actually first to file country? I will try to cover this aspect in a subsequent post.)] and has invented separately but just after the true and first inventor. In such case, this ground of opposition is not available. On the other hand, if the person has wrongfully obtained the invention, it certainly is not entitled to apply for patent. It must be noted that atleast for pre-grant opposition, this ground could also be invoked by ‘any person’ (and not only interested person), and there is not much logic in making this ground available for a person who is not actually the proprietor or person interested in the invention. This seemingly harmless ground of opposition available to ‘any person’, therefore, could theoretically be used a tool to harass the applicant to prove its title over the invention and in particular cases that the claimed inventor is the true and first inventor of the invention. The corresponding provisions for revocation under section 64 are section 64(b) and (c), wherein the section 64(b) also correlates directly to section 6 while providing the applicant of patent not entitled under the Act to apply for the patent as being a ground for revocation [this ground of revocation, therefore, is also available against the patent granted to the hypothetical true but not the first inventor]. Interestingly, there is another provision – Section 64(c) – which provides for a similar remedy and makes wrongful obtention of the ‘Patent’ (and not the invention) in contravention of the rights of the petitioner as a ground for revocation. Although it seems to encompass section 64(b) within its ambit, it is much wider in its scope and its applicability; and also as per the principles of interpretation of the statutes, it must be presumed to be not completely redundant vis-a-vis Section 64(b). It appears that the word ‘Rights’ in the phrase ‘contravention of the rights of the petitioner’ are not limited to the rights within the Act and are also not limited to being the ‘Rights’ of the Inventor (or person entitled to apply for patent). The right could therefore be a right under any other statute or under common law and could be invoked by any person interested. It is presently difficult to hypothesize the situation in which a person (not in the category of persons entitled to apply for patent under section 6) could first prove its interest and then its rights which are contravened by the patentee to wrongfully obtain the patent and more so such ground being allowed to the extent to revoke the patent. If we confer a strict interpretation to the term ‘wrongfully’ to include anything which is not in compliance with any provision of the Act, then we may come across a situation wherein the Controller had demanded the applicant (during the prosecution of the patent application) to insert a reference of another patent(s) under section 19 of the Act which was not complied by the Applicant and the patent was thus (wrongfully) granted without insertion, then the patentee of the to be referenced patent could invoke this ground for revocation of the patent. This is just one possible situation which I could think of. Any new situation and or cases in which the petitioner has/could invoke such ground for revocation of patent are welcome from readers.

2.      Section 25(1)(b) provides for lack of novelty of the invention in light of any document published (before the priority date of the claim) in India or elsewhere as a ground of opposition. It basically covers section 13(1)(a) and 13(2) of the Act on the grounds of novelty as ground of opposition. The corresponding provision for revocation is section 64(1)(e) of the Act which makes a direct reference to the documents referred under section 13 and thus covers this as a ground of revocation (with other grounds as discussed later). The grounds for opposition and revocation on this aspect therefore are almost identical without any inferential variation.

3.      Section 25(1)(c) provides for lack of novelty as ground of opposition wherein the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim but having priority date earlier than that of the applicant's claim. Thus it makes a reference to the documents covered under section 13(1)(b) of the Act. It must be noted that such earlier priority claims being published after the Applicant’s claim are considered only for the purpose of novelty and never for the obviousness [unlike documents referred under section 13(1)(a) and 13(2), as discussed later, and therefore these are classified as separate categories]. For the corresponding provision for revocation, although this would automatically be covered under the already discussed section 64(1)(e) of the Act which encompasses all documents referred in section 13 of the Act, the more relevant counterpart would be section 64(1)(a), which provides, as a ground of revocation, the case where  invention as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India. Very interestingly, this takes into account only those valid claims of earlier priority date which have been part of a granted patent in India and in case where the earlier priority (but later published) claim (as part of a patent application) has not yet been granted as a patent in India, the applicant of such patent application would not be able to invoke it as ground of revocation for the granted patent unless its own claim (patent application) is granted as a patent in India. In a hypothetical situation, it is also possible that the claim of earlier priority is published even after grant of the later priority claim in India (maximum time for publication is 18 months and theoretically minimum time for grant of patent is about 7-8 months) and thus the applicant having earlier priority would certainly like to file a revocation. Although the applicant of earlier priority claim can always take recourse to section 64(1)(e) to place reliance on its later published un-granted claim, I am unable to find the logic behind introducing such critical change in section 64(1)(a) as compared to the ground for opposition. Any views or suggestions by readers are welcome.

4.      Section 25(1)(d) covers what was publicly known or publicly used in India before the priority date of the claim and is equally covered as a ground of revocation under section 64(1)(e) of the Act. However the distinction lies in the explanation to Section 25(1)(d), which provides that an invention relating to a process shall be deemed to have been publicly known or publicly used in India if a product made by that process had already been imported into India before that date (except where such importation is for the purpose of reasonable trial or experiment only). This explanation starts as “For the purposes of this clause...” and is therefore applicable to the respective ground of opposition only. In the similar ground for revocation, however, there is no such explanation and as per the principles of interpretation of statutes, such omission amounts to deliberate exclusion of the effect of such proviso/explanation from the place of omission. It is therefore can be said that for raising a ground of opposition, the importation of product could be counted as use of the corresponding inventive process, whereas for revocation it is not. Again there is lack of logical explanation towards enabling this change.

5.      Section 25(1)(e) is directed towards opposition on the grounds of obviousness and lack of inventive step wherein it takes into account all the documents published before priority date [under section 13(1)(a) and 13(2). Note again that the earlier priority and later published claims under section 13(1)(b) are specifically not included for the purpose of obviousness] as well as what was used in India before the priority date of claim. It must be noted that only ‘what was used in India’ is included and ‘what was publicly known in India’ is omitted here from the aspect of obviousness. One reason behind this omission could be the reason that the obviousness, unlike novelty, is itself a very subjective phenomena and tendering another subjective factor such as ‘what was publicly known’ towards its accountability will tend to multiply the unwarranted subjectivity. This hypothesis however is annulled by the fact that this ground of ‘what was publicly known in India’ is actually specifically included in the corresponding provision for revocation viz. section 64(1)(f). Other than this there is not much difference in these grounds.

6.      Section 25(1)(f) engulfs section 3 (what is not an invention within the meaning of the Act) and section 4(invention not patentable) as grounds of opposition. The corresponding provisions for revocation are sections 64(1)(d) covering section 3 and 64(1)(k) covering section 4. The provisions are almost identical and so are the grounds available for opposition and revocation on these aspects.     

7.      Section 25(1)(g) provides a ground of opposition that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed viz. the requirement under section 10(4)(a) of the Act. This ground of opposition although seems to be very vague and ambiguous (in light of the fact that there are no specific guidelines with regard to the disclosure in patent specification), but they are not only essential they are justifiably very well-founded as ground of opposition available to any person, as they touches the hinges of patent system itself. The corresponding provision for revocation is section 64(1)(h) which in addition to section 10(4)(a) also includes section 10(4)(b) viz. lack of disclosure of the best method of performing the invention. Even the requirements of sufficient and fair disclosure are very explicitly described. It is quite unjustified from the Patentee’s perspective to include an additional ground (of best mode) to challenge the patent once the patent has already been granted and the patentee has already, believing the validity of its patent, incurred costs in development and production. It must be noted here that these grounds (specifically of opposition) are exclusive and if a ground is not specifically mentioned therein, it means it is simply not available.

8.      Section 25(1)(h) refers to the requirement under section 8 of the Act and rule 12 of the Rules. Non-furnishing of the information or furnishing of wrong information are the grounds of opposition. Under section 8, the applicant is required to furnish the details of filing and prosecution of corresponding patent application(s) in other jurisdictions within 6 months of filing of the application in India; and an undertaking to the keep the Controller informed, regularly, of any such applications till the grant of patent in India. Similar ground is available for revocation of patent under section 64(1)(m).

9.      Section 25(1)(i) provides a peculiar ground of opposition. The ground of objection being that that the convention application is not filed in India within twelve months from the date of the basic application in convention country from which the priority is claimed. The first question which came to my mind is why the ground of opposition is confined to only this particular deadline viz. why only convention application deadline being a ground and why not that the PCT national phase application in India was not entered within 31 month from priority application and also why not that the complete specification was not filed within 12 months from the date of provisional application. While searching for the reason behind this, I could realize that for the 31 months deadline in PCT National Phase applications, there is a specific provision (Rule 22 of The Patents Rules 2003) for non-compliance (which renders it ‘deemed to be withdrawn’ in case of non-compliance); and in case of 12 months deadline to file complete specification after provisional specification, there is also a specific provision (section 9 of the Act) for non-compliance (which renders the application as deemed to be abandoned if the deadline is not met). In case of the convention applications, however,  section 135 of the Act provides only that the if the convention application is filed within 12 months from the basic application the date of priority of the claims is the date of basic application. It is, to my knowledge, nowhere mentioned, and perhaps it is not required also, to mention the non-compliance of this 12 months deadline, which will have an obvious effect of ineligibility of the applicant to claim priority. But this could be a reason for inclusion of this as a ground of opposition in case the convention application (claiming priority from the basic application) is actually filed after 12 months period and for which there is no specific provision for non-compliance. Readers are welcome to share their view on this. There is no counterpart provision for revocation of patent.   

10.  Section 25(1)(j) provides non-disclosure or wrong-disclosure of the source or geographical origin of biological material used for the invention. An almost exactly similar ground for revocation is provided under section 64(1)(p).

11.  The last ground of opposition under Section 25(1)(k) is the ground that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere. An almost exactly similar ground for revocation is provided under section 64(1)(q).

Then there are additional grounds for revocation of patent which are not available for opposition. I will cover those grounds in the subsequent post. 

Requirement under Section 8 of Patents Act, 1970: Could it be a PPH in guise?

Recently, USPTO announced changes and implementation of its pilot programme of Patent Prosecution Highway. Before moving onto the discussion in detail, first let us see what creature is this ‘Patent Prosecution Highway (PPH)’.

PPH is a kind of a reciprocal arrangement among a group of IP Offices (PPH Partners) to expedite the examination process and lower the costs involved therein. Under this programme, an applicant receiving a ruling from the Office of First Filing (OFF) in respect of patentability of atleast one claim in its patent application, can request the other offices (of course the PPH Partner Offices), where he is also prosecuting the same/similar application claiming priority from the application at OFF, to fast track the examination of corresponding claims in corresponding applications filed therein. The PPH leverage fast-track examination procedures already available to allow applicants to obtain patents faster and more efficiently. For example, the requested Patent Office can use the OFF’s work products – such as allowances or search reports – to streamline patent processing. One criteria, however, for availing this benefit is that all claims in the subsequently prosecuted patent application must sufficiently correspond to the allowed claims in the OFF application.

Such system is beneficial not only for the Applicants, but also saves time, cost and resources of the Patent Office to act in most-efficient manner.

Presently there are 14 PPH Partners - Australia (IPAU), Austrian Patent Office (APO), Canada (CIPO), Denmark (DKPTO), European Patent Office (EPO), Finland (NBPR), Germany (DPMA), Hungary (HPO), Japan (JPO), Korea (KIPO), Russia (ROSPATENT), Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), United Kingdom (UKIPO) and Unites States (USPTO).

There is one self-evident drawback in this otherwise efficient system, which is that the eligibility to reuse the search and examination results from a partner office is limited to the Office of First Filing (OFF) i.e., priority, application in a patent family. The pilot programme intends to overcome this problem. Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed.  Apart from this, the new framework has also touched upon some finer aspects such as including a new definition of claim correspondence, which will make the system more flexible and user-friendly without compromising efficiency or quality. The pilot programme of PPH, the trial of which is set to commence from July 15, 2011, will be in force initially for a period of one year ending on July 14, 2012 (but which may be extended or terminated earlier depending on volume of activity and other factors).

This, to me, looks like another step heading towards reaching a stage of so called ‘World-Patent’ where there will be a common platform for grant of patent (similar to what the present system of PCT – being a common platform for filing of patent application), which will be valid throughout the world.

Let’s now come to the practice at Indian Patent Office, which is still, by far, a way behind many of the Patent Offices, especially PPH Partners (not intended to demean the Indian Patent Office, in which I have immense faith and respect, but only to make a relative mark in hope for much needed improvisations and betterment). Such a mechanism to expedite the examination is much needed at the backlog ridden Indian Patent Office, which can certainly approve/consider the expedited/default grant of claims in India while relying on the grants of same/similar claims in corresponding patent applications at certain reliable Offices, such as EPO and USPTO (even though there is no reciprocal arrangement with these Patent Offices).

Strangely, we do have the enabling provisions to support this structure. Let’s first read out the relevant provisions viz. section 8 of the Patents Act, 1970 and rule 12 of the Patents Rules, 2006:

Patents Act, 1970, Section 8. Information and undertaking regarding foreign applications

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow – (a) a statement setting out the detailed particulars of such application; and

(b) an undertaking that, upto the date of grant of Patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Patents Rules, 2006, Rule 12.  Statement and undertaking regarding foreign applications:

(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.

(1A) The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be six months from the date of filing the application.

Explanation : For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.

(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing.

(3) When so required by the Controller under sub-section (2) section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller.

It is to be noted that there are two types of information which are discussed in these provisions – (i) information pertaining to ‘detailed particulars of such application’, which is to be mandatorily provided by the Applicant to the Controller within a period of six months from filing/availability. Since the phrase detailed particulars of such application is not described, the heads of the details could be inferred from the Form 3 as:

Name of the Country; Date of Application; Application No.; Status of Application; Date of Publication and Date of Grant.

These are merely factual details which are to be provided in the tabulated form.

(ii) Second type of information to be provided is the information relating to the processing of the application, which is to be provided only when requested by the Controller. This type of information could include information relating to objections, if any, in respect of novelty and patentability of the invention, claims of the application allowed etc. The Applicant is not required to furnish such details suo moto.

Apparently, the idea behind this is that the Applicant will inform the Patent Office, as soon as there is any development on the prosecution front of the Application in other countries, information being limited to the basic details such as dates of application, publication and grant only. The Applicant is also required to provide the updated ‘Status of the Application’. This, however, is a bit ambiguous and unclear as to the meaning of the term and the details sought thereunder. For one, the status of an application from the date of application to the date of grant could be ‘Application pending grant of Patent’. For other, the application status changes several times while during prosecution itself of the application and could be identified as ‘’First Examination report issued’ or ‘Non-final rejection’ etc. as and when it is also updated online/status records. Also, it is not clear whether the Applicant is obliged to inform the Indian patent office that the patent application has been rejected in the other country. And if not, the Controller will never get the Opportunity to ask the objections and/or grounds of rejection.

Practically speaking, the Applicant is duty bound to update the Patent Office about the updates (on detail of the application) and failure to do so is a ground of revocation of patent [see Section 64(1)(j) of the Patents Act, 1970 and the case of Chemtura Corporation vs Union Of India & Ors.]. Regarding the details of processing of the Application, which the Controller is required to ask from the Applicant, if required, I have never received, in my limited practice and experience, any letter from the Controller asking to reproduce the objections or granted claims [Although this is inherently subjective and is out of experience of a few of my fellow attorneys. Readers are requested to enlighten or update the author in case such letters are issued by the Controller]. In fact there are no guidelines issued by the Patent Office in this regard. The mandate is only upon the Applicant to keep the Controller updated of the information and perhaps the Patent Office never resorted to the practice of seeking the second half of the information.  

 It is also possible that the Examiners dig out the information from the data available online or have collaboration with other patent offices (atleast I am not aware of any such thing yet) to provide the information. But the effect of any such information on the Examination, whether positive in case of grant or negative in case of rejection is yet unregistered (except the ISR, Written Opinion of ISA and the Chapter 2 IPRP data which is notably considered by the Examiners). And since the Applicant or the public in general is not privy to the communication between Examiner and Controller, it is difficult to make a conclusive finding on this.

We, as a practitioner before the Patent Office, however, can rely on the grants in other countries during the hearings before the Examiner and fortunately the Examiners do pay attention and possibly some consideration to this. But again this is very subjective and without any directive guidelines. To enhance the efficacy of the system while also being favourable to the Applicants, IPO can handpick certain reliable patent Offices and ask the Applicants to inform if the same/similar claims have been granted in those jurisdictions to expedite their grant in India. On the contrary, Examiners here are found to be very proactive in citing the objections cited in the ISR or otherwise with an inherent tendency at the back of their mind to ‘reject a patent application’ rather than to ‘grant a patent application’. Although it may not be bad to rely on the objections, but the practice to rely on grant for same/similar claims in other countries should also be proactively inculcated into the system.

Deemed: Withdrawal v. Abandonment

This should be the prequel to my earlier post on section 137 and 138, where I discussed the scope and applicability of these sections along with the issue of as to whether the delay in entering national phase in India could be condoned by the Patent Office. Here I would like to make out a clearer distinction between ‘deemed withdrawal of Patent Application’ and ‘deemed abandonment of Patent Application’ as per the Patents Act, 1970.

Although, at times, in general usage, withdrawal and abandonment are used synonymously, their connotations are quite different especially in legal terminology. The dictionary meaning of the word abandoned refers to - give up, surrender, leave or desert; while the meaning of term withdrawal is provided as – to take away or to remove oneself from participation. Thus, it appears that the term ‘withdrawal’ has an element of an action taken (with a presumably clear intent) to effectuate the withdrawal, whereas the ‘abandonment’ is an effect of failure (intentional or otherwise) to take any required action. Let us see the usage of these two terms in the Act:

As per the Act, a patent application is deemed to be abandoned in following cases:

- Section 9 – where the failure to file the complete specification within time (viz. within 12 months from provisional) results in the application to be treated as ‘deemed to be abandoned’;

- Section 21 – where the application is ‘deemed to be abandoned’ if the Applicant fails to put the application in order for grant within 1 year of the issuance of FER; and

- Section 40 – where the application is deemed to be abandoned if any person fails to comply with any direction as to secrecy given by the Controller under section 35, or makes or causes to be made an application for grant of a patent outside India in contravention of section 39.

Thus it is observed that the Abandonment is the effect of failure of the applicant to do o comply with something which he is required to do as per the Act in order to obtain a patent.

With regard to the use of ‘deemed withdrawal of the application’, the Act uses the phrase only at two instances:

Firstly, in section 11B(4), where the application is deemed to be withdrawn if a request for examination (RFE) is not filed within 48 months period from the date of priority; and

Secondly, Rule 22 of the Patent Rules which says that an international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of rule 20. Rule 20, along with other basic requirements, specify the deadline to enter PCT national phase in India to be 31 months from priority.

These two provisions for deemed withdrawal are in addition to the actual withdrawal provision [section 11B(4)(i)] wherein the applicant can withdraw its patent application anytime before the grant (and atleast 3 months before the publication to withdraw without prejudice). It must be observed that although the above mentioned provisions for ‘deemed withdrawal’ also deals with failure of Applicant to comply with the deadlines, they are still termed as withdrawal instead of abandonment. The reason behind the use of term withdrawal instead of abandonment, could be to confer ‘an intention not to proceed’ on part of the applicant and making such failure equivalent to a positive action taken by applicant to withdraw the application instead of counting it as a mere failure (which could either be intentional or un-intentional, and accordingly could be condonable in certain circumstances if delay is justified and unintentional). These, in practice, are the two strictest deadlines in the Act, which are not condonable by any authority. Therefore, I believe that the terms ‘withdrawal’ and ‘abandonment’ are used judiciously in the Act, not with respect to the cause but with respect to the effect.

Does the Patents Act, 1970, provides for deemed publication of patent application?

The present analysis pertains to the quid aspect of the hackneyed phrase “Patent System is a quid pro quo”. Much ink has been spilt over the understanding that the patent system rests on the hinges of a bargain between the Inventor and the Public, wherein the inventor discloses his invention to the public (quid), thereby contributing to the research and development, against which (pro) he gets limited exclusivity to practice the invention (quo). In such system, making an invention open to the public is not only a critical but an indispensable module, which basically constitutes one part of the bargain in itself.

The words ‘published’ or ‘publication’ and the phrase ‘open to the public’ are not defined in the Patents Act, 1970. In-fact these seemingly synonymous terms are actually not synonymous to each other and seems to have been used quite judiciously in the Act to confer their respective meanings. Although the term ‘Publication’ is defined in section 3 of the Copyright Act, 1957, which could be termed as pari materia for the Patents Act, 1970, but it would be unjustified to import that definition for the purposes of Patents as the significance of the term varies significantly among these two statutes. The bone of contention here is - whether a patent application is deemed to be in public merely by the efflux of stipulated time period (of 18 months) and the publication of application in the Patents Journal is a mere formality; or the application is considered to be published only upon the actual publication in the Official Journal.

Section 11 A (1) of the Patents Act, 1970 provides that “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed” (emphasis provided). The time period is provided in Rule 24 of the Patents Rules, 2003, which states as:

“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” (emphasis provided)

Thus there is clear consistency about the use of word ‘open to public’. The usage of the phrase ‘open to public’ makes out a clear inference that the ‘open to public’ becomes operative, automatically, as soon as 18 months period expires. This is different from the ‘publication’ which means literal publication in the Patents Journal and which has no effect on the operation of the ‘open to public’ clause. This is evident from the fact that the same Rule 24 has a proviso which states that:

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

The use of phrase ‘open to public’ and the word publish/publication in the same clause (Rule 24) clearly reflects that the legislature intentionally used the different terminology to confer different meanings thereto. At all other instances in the Act and Rules justifiably uses the word publish/publication only.

It is further evident from the fact that the proviso was added only in 2006 and then it became imperative upon the Controller to publish the application within 1 month of the expiry of the period. It cannot be said that before the characterization of this proviso, the applications were not used to be open to public after expiry of 18 months. Still, at several instances, due to technical glitches or mishandling, there are several applications which do not get published in the Patent Journal within 1 month of the expiry of the 18 month period. In effect, such applications are open to public but are not published and the applicant as well as public will be devoid of any and all rights and liabilities with respect to that application which arises only upon the actual publication in the Patent Journal. However, in a very idealistic situation, a very pro-active competitor who somehow keeps track of the filings by an individual/organization should be able to file a request for inspection and be inspect the file upon payment of requisite fee after the application is open to public even though it is not published. In this regard, section 11A(6)(b) provides that:

Upon publication of an application for a patent under this section—

the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public. (emphasis provided)

Firstly, it provides that the patent office may make the specification and drawing available to public. This ‘may’ should be treated as shall here otherwise it will greatly prejudice the provisions of pre-grant opposition wherein ‘any person’ can file a pre-grant opposition and for that these details are usually necessary. As per section Section 11A (5) of the Act, the Publication must include “date of application, number of application, name and address of the applicant identifying the application and an abstract”. An abstract may not provide sufficient details to file a pre-grant opposition and the Patent Office cannot refuse the availability of the specification and drawings. Secondly, merely stating that upon publication the specification is available to public does not rule out the possibility that it cannot be before literal publication in the Patent Journal. The use of word ‘publication’ is due to presumption that there is no other source of information available to the general public that such an application has been filed and thus a request for inspection could be filed only after the publication.

Finally, as per section section 11A(7) of the Patents Act:

On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. (emphasis provided)

These ‘like rights’ of the applicant starts from the date of publication of the application. Theoretically, it should start from the date on which the application becomes open to public viz. immediately upon expiry of the 18 months period irrespective of the publication. This is because, the rights of the applicant should start as soon as the application is in public domain and for the purpose of being available in public domain, same standards must be applicable as are for the purpose of determining the novelty, wherein, hypothetically, if something which is available on an auction in a some remote country for a very short period of time and at very stringent conditions which eventually was not bought by someone, does constitutes the prior art. Therefore, simply mentioning that the invention shall be available to public after 18 months itself is sufficient to deem it as available in public domain, automatically, after the period of 18 months and an infringer should not be able to say that it was not aware of the existence of any such patent application. However, section 111 of the Patents Act is of some relevance here, which provides as:

In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

On a similar note, it will well be a defence available to the infringer, atleast against the charge of damages, that atleast until the publication it had no reasonable ground to believe that such an invention has been encompassed in a patent application. Therefore, it may be practically not viable to offer such like rights to the applicant without actual publication of the application in the Patent Journal.

It can be concluded that the application is deemed to be published on the expiry of 18 months time period and any person can, upon payment of official fee, inspect the file the very next day of expiry of 18 months. [Thus ‘publication’ of an application could take place only simultaneously or after the application becomes ‘open to public’. In regular case, the application becomes open to public with expiry of 18 months and is published within 1 month by the Controller in the Patent Journal. In case a request for early publication is filed by the applicant, both the acts viz. publication of application and the application becoming open to public, takes place simultaneously.]

With respect to the other rights and liabilities of the applicant, public and Controller, regard shall be had to the actual publication in the Patents Journal. However, as mentioned, there are instances where the application do not get published within the stipulated time, and in such cases the fate of applicant’s like rights becomes unclear. Can the applicant claim its rights from the date of expiry of 18 months in such case; or can the effect of deemed publication be extended to impact the other rights and liabilities of the applicant and/or public? The Courts are yet to see any case on this issue, and I hope have some insightful decision soon.

Doctrine of Election: Is it applicable in Patents?

Is the 'Doctrine of Election' applicable in case of Patents? This is the bone of contention in one of the recent-most case of Dr. Aloys Wobben Vs. Shri Yogesh Mehra and Ors. [Decided on 06.12.2010] [complete judgment may be read here http://judg-mental.blogspot.com/2011/03/dr-aloys-wobben-vs-shri-yogesh-mehra.html].

Before moving onto the case and its analysis, I would like to discuss the basic tenets of the Doctrine of Election. For the applicability of the Doctrine of Election, there is a pre-requisite of the presence of three elements of election - existence of two or more remedies; inconsistencies between such remedies; and choice of one of them. All three elements are necessary and if any one of the three elements is not there, doctrine does not apply. And as per the doctrine – the petitioner can avail only one of the remedies available and not all of them simultaneously. The 'doctrine of election' is based on the rule of estoppels and thus bars a person from availing two or more remedies simultaneously.

In this case, the defendant sought for: (a) revocation/rectification of the plaintiff’s patent, in a proceeding before the Intellectual Property Appellate Board (IPAB), under provisions of Section 117G (basically a revocation petition under section 64 of Patents Act); and (b) cancellation of the said patent, as defence under Section 107 of the Act, before the Court, in the suit for infringement.

A revocation/rectification petition could be filed under section 64 of the Patents Act, 1970 before the IPAB. Section 117G is only with regard to the transfer of pending proceedings for revocation of patents from High Courts to the IPAB. Section 64 basically lists out 17 grounds (a-q) for revocation of patent. As per section 107, all these grounds are also available as a defence in a suit for infringement. In the present case, the plaintiff urged the court to stop the defendant from availing both the options simultaneously and relied on the doctrine of exercise.

The Hon’ble Court denied the plaintiff’s application and allowed the defendant to pursue both the remedies simultaneously. The reasoning given by the Hon’ble court is as:

“Though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before, he may prefer an application before the Board for cancellation or revocation. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable, or alternatively, he is asked not to raise the ground of cancellation in his written statement, his defence would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy; that would be plainly against public policy.” (emphasis provided)

The reasoning provided by the Hon’ble Court seems quite perfunctory to me. Let’s first discuss the applicability of the Doctrine of Exercise in the present case.

The remedy available in both the cases to the defendant is same (not because of the common grounds of section 64, but because of the common result) viz. the revocation/cancellation of the plaintiff’s patents. Secondly, it is quite possible that the IPAB and the High Court, while deciding upon the same issue parallely, may reach to different conclusions and issue conflicting orders (although in that case, the order of High Court shall prevail, but it will make the IPAB’s exercise perfectly futile), whereby one forum may revoke the patents and the other may upheld the validity of patents. Thirdly, in case a suit for infringement is pending against the defendant, it certainly has the choice to opt any of the options viz. to file a petition for revocation for patents at IPAB or to file a counterclaim for revocation in the suit. Thus, it seems that the doctrine should be applicable in the present case.

The Hon’ble Court erroneously construed it to interpret that availing of its rights before one forum will render the defendant devoid of its rights to be used before the other forum, which is certainly not the case. It is agreed that the right to file a counterclaim of revocation before High Court and right to file a petition for revocation before IPAB are statutory rights and cannot be taken away from the defendant, however, the Court could have suspended simply suspend one of the proceedings until the other one is pending, as otherwise it amounts to multiplicity of proceedings. Such an order will not take away the rights of the defendant, but will only suspend its exercising of those rights for the time being they are being pursued at a different forum. Apparently, unlike the Trade Marks Act 1999, there is no clear cut provision in the Patents Act, 1970, to this effect. Section 113 (2) of the Trade Marks Act, 1970 clearly provides that:

Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark. (emphasis provided)

Not only this, as per section 113(1) of the Trade Marks Act, 1999, the Court, if satisfied that such defence is prima facie tenable, provides 3 months time to accused to file a rectification before the Appellate Board.

Although, there are no corresponding provisions in the Patents Act, the Court can certainly decide to suspend one of the proceedings (where the rights and remedies are identical and the parties involved are also the same), in order to avoid a situation of possibly conflicting decisions. This could be further extended to a hypothetical situation, where within one year period of grant of patent, a person (interested) could file - a post-grant opposition under section 25(2) (to be decided by the Opposition Board); a petition for revocation of patent under section 64 (to be decided by the IPAB); and supposing a case of infringement has been filed by the Patentee against the person, he can also file a counterclaim of revocation under section 107 (based on any ground under section 64) (which matter than will be decided by the High Court). The grounds under section 25(2) and section 64 are almost similar with very minor changes.

Thus, in such situation, it is very much possible that the person is seeking same remedy viz. revocation of patents, effectively before three different forums, while relying on the same grounds. If allowed to proceed simultaneously, the outcome could be three different decisions by three different forums. The Hon’ble Court, therefore, ought to have suspended one of the proceeding, until pendency of the other.

Rules 137 and 138 of the Patents Rules, 2003

Lets begin from the end – literally - from the last couple of rules of the Patents Rules, 2003 viz. rule 137 and rule 138. The primary question here is "Whether a petition for condonation of delay in filing PCT national phase application in India maintainable or not?" The discussion, however, is not limited to this question only.

Although these two rules have been discussed, quite often, on some earlier occasions now, I would like to revive the discussion in light of the recent most decision of the Madras High Court in the case of Nokia Corporation, A corporation organized and existing under the Laws of Finland rep. by its Power Agent Col. J.K. Sharma Vs. Deputy Controller of Patents and Designs [Decided on January 24, 2011] [complete judgment may be read at http://judg-mental.blogspot.com/2011/03/nokia-corporation-corporation-organized.html]. For better understanding, before moving on to this decision of Hon’ble High Court, I would like to introduce you these two notorious provisions, which constitutes primarily the subject matter of this case. The rules are reproduced below:

137. Powers of Controller generally -

Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

138. Power to extend time prescribed -
(1) Save as otherwise provided in the rules 24, sub-rule (4) of rule 55 and sub-rule (1A) of rule 80, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

(2) Any request for extension of time made under these rules shall be made before expiry of prescribed period. (emphasis provided)

I will come to the interpretation and emphasized portions of the Rules later while analysing the judgment.

In this case, Nokia first tried (unsuccessfully) to file a PCT National phase application at the Patent Office counter on 18.08.2009, while claiming priority from the US application 11/622, 147 dated 11.01.2007. As per Rule 20 (3) and Rule 20 (4) (i) of the Patents Rules, 2003 (hereinafter referred to as the Rules), the national phase application under PCT must be entered within 31 months from the priority date. In this case, the 31 months deadline expired on 11.08.2009. On scrutiny, the Patent Office returned the filing to applicant for non-compliance with filing deadline. Rule 22 of the Rules specifically provides that ‘An international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of Rule 20.’ (emphasis provided).

Upon this, the petitioner filed an application online and received an application number. [Although not relevant for the subject discussion here, but this exposes a major flaw in the existing system at IPO. Isn’t there any provision for basic scrutiny of applications filed online – may be some provisional number should be given unless scrutinized and accepted to provide a final application number. This is because an application number itself has some significance and entitles the applicant to claim to have a live application pending at the patent office (irrespective of the fact that it eventually, later in time, may be ordered as null ab initio)].

The petitioner also filed a petition for condonation of delay under Rule 137 and 138. The Deputy Controller rejected the application as not maintainable. The Hon’ble Court upheld the maintainability of the petition and remanded back the case to the Deputy Controller to be decided on merits.

I am not in full agreement with the arguments presented by the petitioner and the reasoning of the court in upholding the petition. This decision, to me, seems to be quite off the track and lacks any convincing reasons in support of the decision. I will take the issues here one by one:

Firstly, it was stated that Nokia filed a petition for condonation of delay under Rule 137 AND 138. I am not able to conceive of any circumstances under which a single petition would lie under r. 137 AND r. 138 both. These two are different provisions, dealing with different cases and providing different remedies. Rule 138 does NOT provide for ‘Condonation of Delay’. It is a provision for seeking ‘Extension of Time’ when applied before the expiry of the prescribed time. The difference between Condonation and Extension must be very clear here. As per Rule 138, the Controller is given power to EXTEND the time prescribed in the rules (except for exceptions of Rule 24B, sub-rule (4) of Rule 55 and sub-rule (1A) of rule 80) for a period of one month at the request of the applicant whereby such request is made before the expiry of the time prescribed in the rules. The request for extension must be made before expiry of time prescribed in the Rules and not before expiry of 1 month from the expiry of time. This is also evident from the fact that before the last amendment of 2005, the rule provided for making of request within extendable time. The before amendment rule is as:

Rule 138(2) : Any request for extension of time made under these rules shall be within the extendable period by request unless otherwise provided in these rules.(emphasis provided)

This was specifically amended to make it ‘before expiry of prescribed period’. It is like, the applicant must be able to foresee the delay and specifically request for an extension before the expiry. Once, the deadline expires, rule 138 becomes infructuous. One cannot make a petition under Rule 138 after the expiry of the deadline. This could be used in circumstances for example where the applicant is not able to submit the proof of right (under rule 10) or statement of undertaking (under rule 12) within 6 months and seek an extension of another one month, ofcourse with reasoning. A petition for condonation of delay viz. after expiry of the deadline, could be made only under rule 137 and NOT under rule 138. In the present case, where the petition was for condonation of delay only, the whole set of arguments and the reasoning given by the Hon’ble High Court with respect to rule 138 stands irrelevant and without any cause. The Court held that an application for extension could be made within extended one month, which interpretation is without any substantial reasons or justifications. An EXTENSION cannot be retrospective in nature. Such post-facto Extension would, by its nature, become a Condonation of delay and not an extension of time.

Secondly, on the issue of whether the petition under rule 137 and rule 138 (sic) is maintainable, court held that the petition is maintainable and should be disposed off on merits of the case. Rule 137 is a general provision which gives an option to the applicants to file a petition for condonation of delay once the delay has occurred and gives the Controller powers to condone such delay. Rule 20 and Rule 22 are specific provisions as per which the deadline to file strict and the consequence of non-compliance are provided. I believe that in case of such delay (non-compliance of Rule 20), the petition under Rule 137 is not maintainable for below reasons:

i. The deadline of Rule 20 viz. 31 months to file PCT national phase application is a mandatory provision, for which the consequence of non-compliance are that the application is “deemed to be withdrawn”. The term used here is ‘withdrawn’ which by itself means that the application is irretrievably expired. The term ‘withdrawn’, unlike ‘abandoned’, tends to reflect that it is done intentionally (with some positive act) by the applicant. The term has been used twice in the Patents Act and Rules. Once when the 48 months deadline to file the Request for Examination expires and second here when the 31 months deadline expires. In both cases, it is deemed that the applicant has WITHDRAWN the application. Thus, there is no scope for condonation of delay when the act itself is deemed intentional. Secondly, most other rules doesn’t provide for the consequences of non-compliance for all other deadlines prescribed therein. In such cases, where there is no specific rule, the general rule of condonation of delay is applicable and a petition for condonation of delay is maintainable under rule 137. As soon as the application is deemed ‘withdrawn’, it is ‘Dead’ in the eyes of law and the Controller doesn’t have powers to revive a dead application which does not exists in law. In support of this I would like to cite a very insightful judgment of Justice S Murlidhar in the case of Nippon Steel Corporation vs Union Of India, whereby in a similar case of deemed withdrawn application (due to expiry of 48 months deadline to file RFE), on a request for amendment of patent application by the petitioner, the L’d Judge said “request for amendment can be made only in relation to an application that exists in law” (emphasis provided).

ii. Secondly, without prejudice, rule 137 confers power to Controller to condone delay subject to that this irregularity could be obviated without detriment to the interests of any person. What is the test/criteria to determine whether such condonation would not be detrimental to the interests of any person. In a very highly competitive and transparent system, it is possible that the competitors are keeping a very close eye on the patent applications filed (and not filed) by a company and would like to exploit the non-filing of application from the very next day of expiry of the 31 months deadline. In such case, how the controller is supposed to check with every player in the market, as the delay here is not limited to one month and could be of one year.

On a more general note, it is a well settled principle of interpretation of statutes that specific terms of a statute override the general terms of the same statute. I would like to cite from the judgment of Fagu Ram Mahadeo Ram v. Pannalal [AIR 1962 Pat 272] whereby the Hon’ble court held that “It is one of the accepted canons of interpretation of statute that, if in the same field there is a special provision, which is applicable as also there is a general provision, the latter would give way to the former.”

I agree with the Court on rejecting the Controller’s reliance on rule 6(5) that the postal delay is the only case, where condonation of delay could be entertained and granted. This could be one of the case but not the only case where a petition for condonation of delay is maintainable. It is quite often that in case of patents and trademarks, we tend to give consideration to actual practice while interpreting the statute and tries to justify our interpretation with the existing practice being followed by the office. This is what the Deputy Controller actually tried to do in this case while standing by his orders of rejecting the application. I think his stand was correct but for wrong reasons. The practice cannot violate the written law; it can only stand where there is no specific written law on the issue or there lies some ambiguity in law to the extent that the practice is not in violation of the law.