mardi, juillet 06, 2010

India: High Court steps in to cancel controller of patent's deemed abandonment order

High Court steps in to cancel controller of patent's deemed abandonment order

Contributed by Singh & Associates


Section 21 of the Patents Act 1970 provides that if an applicant does not comply with the requirements of the act or instructions from the Patent Office within the prescribed timeframe, the patent application will be deemed abandoned.

In Telefonaktiebolaget LM Ericsson v Union of India(1) the Delhi High Court looked into the issue of 'deemed abandonment' of a patent application under Section 21(1) of the act. This case raised an important issue regarding the rejection of an application by the controller of patents by way of deemed abandonment under this section.

According to Section 21(1), a patent applicant must meet all requirements or objections raised by the Patent Office within a stipulated timeframe of 12 months from the date of issuance of the first statement of objections (see Rule 24B(4)). Upon failure to comply, the Patent Office may treat the application as abandoned by the applicant.

Section 21 reads as follows:

"Section 21. Time for putting application in order for grant.

(1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller."

Rule 24B reads as follows:

"Rule 24B: Examination of Application.

(4) the time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements."

According to the petitioner in the present case, the patent application was filed on July 29 2005. It was published in the Official Journal of Patents by the Patent Office and on October 8 2007 the controller issued the first examination report, pointing to defects and shortcomings in the application. The petitioner filed its reply to the first examination report on December 10 2007. The petitioner received a second examination report reiterating the same issues mentioned in the first examination report. The petitioner also duly filed a reply to this examination report within the stipulated timeframe on September 22 2008, together with a request for a hearing.

On October 10 2008 the controller issued an official letter to the petitioner, stating that "the last date for putting the application in order for Grant has been expired on 8th September 2008, hence the Application has been deemed to be abandoned under section 21(1) of the Act". On these grounds, the patent application was rejected and the petitioner initiated the present case.

The Delhi High Court observed that the grievance of the petitioner was twofold. First, as the application had been deemed abandoned, the applicant had no opportunity to file an appeal, which otherwise would have beeen available to the applicant had the order of rejection been passed under Section 15 of the act. Second, the order did not deal with the applicant's submissions to the objections raised by the controller in the examination reports.

Further, the court was of the view that the applicant had replied to the objections raised. If such reply was found unsatisfactory, the controller should have proceeded with the rejection of the application under Section 15, not Section 21(1). Section 15 reads as follows:

"Section 15. Power of Controller to refuse or require amended applications, etc., in certain cases.

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so."

The court pointed to the case of Ferid Allani v Union of India,(2) wherein it was held that abandonment requires a conscious act on the part of the petitioner which would reveal an intention to abandon the application. However, in the present case the petitioner duly responded in writing to all objections set out in the examination reports. Further, the petitioner's intention was never to abandon its application, which was apparent from its reply dated September 22 2008, where a request was made for the appointment of a hearing in case the controller was not inclined to grant the patent. The court also took the view that it was the controller's duty to give the applicant a proper hearing before dictating any order which would adversely affect the applicant's rights.

Ultimately, the court held that the controller had erred in his decision that the petitioner had abandoned its application under the terms of Section 21(1) of the act. Under the present circumstances, the patent application could not be rejected on this ground. In the controller 's opinion, the rejection, if necessitated, should have been carried out under Section 15 of the act. However, no reasons were given to indicate why the reply filed by the petitioner was not found in order for the grant. In addition, no account was given for the denial of the opportunity to be heard.

For these reasons, the Delhi High Court preferred to set aside the controller's impugned order and ordered the restoration of the petitioner's patent application. Through its decision, the court clarified that if an applicant has responded to the objections raised by the controller within the stipulated timeframe, the application cannot be deemed abandoned under Section 21(1) of the act. If the controller is dissatisfied with the applicant's submitted response, the controller should reject the application for the grant of patent under Section 15 of the act. This provides the applicant with an opportunity to appeal under Section 117A of the act. Section 21(1) will be applied only when the applicant has done nothing, has not replied or has abstained from replying within the stipulated timeframe (ie, it has done nothing to put its application in order for the grant as required under the act).

For further information on this topic please contact Manoj K Singh at Singh & Associates by telephone (+91 11 4666 5000), fax (+91 11 4666 5001) or email (manoj@singhassociates.in).

Endnotes

(1) WP (C) 9126/2009.

(2) 2008 (37) PTC 448 (Del).