Examination and its commencement under the Patents Act: A conflict within the law

While discussing this issue with one of my close friend, I realize that there seems to be a clear conflict on this point among the Patents Act, 1970 and the Patents Rules, 2003.

From the general perception under the Patents Act, let’s assume for the time being that the term ‘Examination’ here refers to the formal examination of the patent application for the purpose of identifying the patentability of the alleged invention encompassed therein (although the term ‘Examination’ may bear a wider perspective then aforesaid and deserve a broader interpretation with consequences on the commencement thereto, the possibilities of which I shall discuss in the latter part of this post).

The formal examination of the application is considered to commence when the Controller actually refers the application and specification and other documents to the Examiner for preparing a report on patentability. All further steps are irrelevant for the present discussion and are thus avoided here. Of course such reference by the Controller of the application to the Examiner takes place only if the applicant has filed a request for examination (RFE). However, there is a prevalent conception that the examination does not or cannot commence also unless the application has been published viz. the actual examination can commences only if the request for examination has been filed as well as the application has already been published (of course we are not taking into account here that the applications are taken up for examination in the sequential order of the filing of the request for examination, which is quite well settled). This conception is in fact even rightly supported by Rule 24B (2)(i), as reproduced below: 

“The period within which the Controller shall refer the application and specification

and other documents to the examiner in respect of the applications where the request

for examination has been received shall ordinarily be one month from the date of its

publication or one month from the date of the request for examination whichever is

later.” (emphasis provided)

I do understand that this discussion is purely academic as this issue may sound extremely redundant and impractical from the view of as things currently stand at the patent office. This is because the currently pending backlog at the patent office doesn’t allow any application to be taken up for examination before about 4-5 years and by then in all possibilities the application would have been published (either under requested or by default after 18 months). For this problem, lets hypothesize a situation where the patent office has zero backlog and the turnaround time has reduced to 1 day with prompt action by Controllers and Examiners (I wish I see this happening in my lifetime!). In such a scenario, if a standard patent application (not PCT or Convention application, just to avoid any complexities) with complete specification is filed at the Patent Office on January 1, 2012 along with the request for examination, then the Controller shall, according to Rule 24B(2)(i) shall still have to wait for the application to be published (which is June 30, 2013, unless published early on request) in order to commence the examination viz. to refer the application to an Examiner.

Now let’s see what the relevant section has to say in this context. The section 12 of the Patents Act is reproduced below:

     

“12.  Examination of application

   (1)  When a request for examination has been made in respect of an application for a

patent in the prescribed manner under sub-section (1) or sub-section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely,—

(a)    whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;

(b)   whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;

(c)    the result of investigations made under section 13; and

(d)   any other matter which may be prescribed.

(2)  The examiner to whom the application and the specification and other documents

relating thereto are referred  under sub-section (1) shall ordinarily make  the report to the Controller within such period as may be prescribed.” (emphasis provided)

Thus the statute, on the contrary provides that when a request for examination has been filed, the Controller shall, AT THE EARLIEST, refer the application with specification and other documents to the Examiner viz. commences the Examination. There is no reference of subjectivity to the publication of the application here. More interestingly, while this section 12 was amended in 2005 to insert, as one of the other amendments, the phrase “at the earliest”, the conflicting provision under Rule 24B(2)(i) came into effect under Patent (Amendment) Rules 2006 only viz. within a short span of about 1 year only.

This appears to be a clear conflict in law. There could have been a scope of harmonious interpretation of the statute in case the Act has merely mentioned something to the effect that upon filing the request for examination the Controller shall refer the application to the Examiner and one could in that case say that the Rule just adding another requirement (of publication) to be checked by the Controller before he actually refers the file to the Examiner after the filing of the RFE. Unfortunately, that is not the case since the Act specifically added the phrase “at the earliest”, which doesn’t leave any scope of the dependency upon publication (which is not even mentioned in the section) in order to commence the examination. Thus, going by the general rules of interpretation of statute, the Act trumps the Rules and in case of clear conflict the Act prevails. In this case, accordingly, section 12 shall prevail against the Rule 24B to the extent of conflict.       

Regardless of what has been discussed above, one could also take a view that the term ‘Examination’ is quite broad even in the context of its usage in the Act/Rules, wherein a general meaning of the term ‘Examination’ could be inferred from the prescriptions under section 12 (1) (a) to (d), in which (a) states “whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder”. In such case, isn’t the Controller under an obligation to scrutinize every patent application soon after its filing at least from the perspective of its subject matter to determine whether the application is related to a defence related invention and if it is so then to raise an objection within 6 weeks of the filing (because after 6 weeks, under section 39 of the Act, the Controller loses control over the Applicant in respect o filing corresponding patent applications in other countries). Is it not a check of the application is within the requirements of the Act viz. a part of the Examination, which effectually is deemed to have begun even before the filing of the RFE.  I am not sure if this scrutiny is or can be construed as part of the Examination. Certainly the exclusion of any prescribed manner of this scrutiny in the Act/Rules cannot be the reason. The reference of the application or for that reason any other matter by the Controller to the Examiner(s) is purely discretionary. Even in the seemingly mandatory provision under Section 12 and Rule 24 that the Controller “shall” refer the application to the examiner, the “shall” should be treated as “may” or it may be deleted altogether as a redundant provision. This is because the Controller is the point of authority under the Act and as per Section 73 of the Act, the Examiners “may” be hired by govt. to facilitate the Controller in discharging its functions under his authorization. The Controller is given enough wide powers to delegate the work or to retain it. It is understandable that the Rules have been made to regularize the procedure and make it more transparent, they should, at the same time, address all possible situations. In a hypothetical situation, assuming there are so few patent applications (say only 1 per month) are filed at the Patent Office so that the govt. need not hire the Examiners believing that only one individual person (viz. the Controller) could examine and handle it on its own. In such case, the rule and perhaps the section become redundant and infructuous to this extent.   

In respect of the publication, Examination and Grant of patent, I have always been of the view that the baseline is that the Patent should not be granted before the expiry of six months of the date of publication [under Rule 55(1A), in order to provide sufficient time for pre-grant opposition] irrespective of when, how and by whom the examination is commenced.

Any suggestions and inputs are welcome!