Section
71 of the Patents Act provides for rectification of any entry in the register
of patents upon application by any aggrieved person. The entries which should
be maintained in the Register of Patents are provided in section 67 as:
(a)
the names and addresses of grantees of patents;
(b)
notifications of assignments, extensions, and revocations of patents; and
(c)
particulars of such other matters affecting the validity or proprietorship of
patents as may be prescribed.
Thus,
the entries in the register as referred to in section 71 are the entries pertaining
to the formal details post grant of a patent. Thus it must be noted here that
this is a separate then the provision for amendment of application under
section 57 (which is applicable post grant also) and the provision for
correction of clerical errors by the Controller under section 78 (either suo
moto or upon a special request made by a person interested). While section 57
and 78 relates to amendments/corrections in the patent application and/or the
complete specification accompanying the patent application, the scope of
section 71 is limited to the entries in the Register and has nothing to do with
the patent application or the specification.
As
provided in the section, the rectification can be requested in an application
by any person aggrieved before the IPAB (which was High Court until 2002
amendment). Since a wrong entry in the Register of Patents could well be
equally prejudicial to any other person as it may be to the patentee in different
circumstances, the scope is rightly left open for any person who can establish its
grievance in order to have the right to apply for rectification under this
section. Section 71 only prescribes the manner of disposing off the
rectification application, wherein the rectification is ultimately effectuated
by an order from IPAB for the making, variation or deletion of any entry in the
register which it think fit. The Patents Act and for that matter the Patents Rules
are however silent about the time limit by when the aggrieved person can file
an application for rectification, any consequences of delayed filing or scope
of condonation.
In
an old but perhaps the only case (which I am aware of) dealing with this
particular issue is the case of Bayer Aktiengesellschaft of
Leverkusen Federal Republic of Germany v. Controller of Patents,
Government of India (AIR 1982 Cal 30). Although this is a
case of pre-amendments, but fortunately there has not been any amendment in
this section apart from the one according to which the adjudicating authority
is IPAB rather than High Court. In this case, the aggrieved party is the
patentee who filed a petition for rectification of the entry relating to Patent No. 139978 in the register.
This was the time when the term of patent used to be different for drugs (5-7
years) and for other products (14 years). It was alleged by the petitioner that
the claimed compound is an intermediate product and is not intended nor is
capable of being used as a drug or medicine as defined in the Act. The Controller,
however, classified this product as a 'drug' and fixed the period of the patent
for 7 years from the date of the sealing. According to the petitioner the
period of this compound should have been 14 years and hence filed the
application for rectification of the register by deleting 7 years and inserting
in its place 14 years.
Without going into the
merits of the case whether the claimed compound was a ‘drug’ or not, lets limit
our discussion to the issue of limitation and thus maintainability of the
petition, which was also the prime issues in this case.
In this case, the patent document was issued to the Patentee on
28-6-1977 providing for 7 years protection from 5-5-1974 ending on 5-5-1981.
The patentee, however, filed the petition for rectification only on 1-12-1980.
The Controller argued that the application under Section 71 of the Act would be
governed by the residuary Article 137 of the Limitation Act of 1963 and as such
the application should have been taken out within 3 years from the date of
receipt of the patent documents on 28-6-1977 when his right to apply accrued,
and thus the application dated 1-12-1980 is time barred and not maintainable. The
Controller, in support of its contention, relied upon the case of Kerala State Electricity Board, Trivandrum
v. T.P. Kunhaliumma, [1977] 1 SCR 996, wherein it was held that :
"The
changed definition of the words 'applicant' and 'application' contained in
Sections 2(a) and 2(b) of the 1963 Limitation Act indicates the object of the
Lamitation Act to include petitions, original or otherwise under special laws. The
interpretation which was given to Article 181 of the 1908 Limitation Act on the
principle of ejusdem generis is not applicable with regard to Article 137 of
the 1963 Limitation Act. Article 137 stands in isolation from all other Arts,
in Part I of the third division. Article 137 includes petitions within the word
'applications'. These petitions and applications can be under any special Act."
The court was agreed with the Controller’s contention
and accepted the principle emphasized in the cited case, while holding that:
“In my opinion,
the decision reported in [1977] 1 SCR 996 puts an end to the controversy
regarding applicability of 1963 Limitation Act to special laws or local laws.
There is no doubt that in this case Article 137 will apply as no time limit was
put by the Act itself and this application has to be made to the High Court.
This application should have been made within 3 years from the date when the
petitioner's right to apply accrued. It was not disputed by the petitioner that
the relevant patent was sealed on 23-4-1977, recorded in the register on
4-6-1977 and the Patent documents were issued to the petitioner on 28-6-1977.
This application made on 1-12-1980, was clearly beyond three years from the
date of accrual of right to apply and is barred by limitation on the face of
the application.”
I
believe that while the application of Article 137 of the Limitation Act for
putting a time limit of 3 years in this particular case might have been
justified in light of the facts that the Patentee was specifically made aware
of the particular entry by means of the issuance of patent certificate to him
and he simply sat on his right (to make an application for rectification) which
he didn’t exercise until the patent was about to expire. This, however, may not
always be the situation as it is quite possible that the aggrieved person is
not aware of the wrong entry in the Register for quite long, particularly when
the aggrieved person happens to be other than the patentee. For example any
wrong entry pertaining to the validity of patent may seriously affect the right
of third parties, who have no reasonable means to know of the entry on the
Register. It must be noted that the Article 137 of the Limitation Act provides
a time limit of 3 years from the date on which the right has accrued and
technically the right in such cases to file a petition for rectification
accrues from the date on which the wrong entry was made on the register (since
after that any aggrieved person can file a petition for rectification). Thus,
if Article 137 of the Limitation Act were to be set as standard for all cases
in counting the time limit for filing rectification petition under section 71,
then in each such case the time limit shall technically expire as soon after
completion of 3 years from the making of such wrong entry in the register,
whereas it is possible that any aggrieved person comes to know of an apparent
mistake only after 3 years. It would then be highly unjustified and irrational
to deny the applicant such right to get the entry rectified and let the wrong
entry be maintained on the register. If at all any limitation of time is to be
applied in such cases, it must be counted from the date on which the knowledge of
the wrong entry could be attributable to the applicant. Still,
however, in situations where the applicant is approaching the authority beyond
any such prescribed time period or limitation, the authority cannot prima facie
afford to deny the rectification where the mistake is apparent and the responsibility
of maintaining purity of the Register stands significantly higher than denying
the applicant its time barred right. Thus,
it is likely that Article 137 of Limitation Act or for that matter any time
limit for the purpose of filing a petition for rectification cannot be applied
without taking into account all the circumstances of the case. This is perhaps
the reason why no particular time limit is expressly provided in the statute.
Any
comments are welcome!
