Will the patent survive ? – The answer is Yes and No. Its clearly a mixed bag because of the precedence set by the Indian Courts and the practise adopted by the Indian Patent Office.
Maintaining strict deadlines is sometimes difficult for the applicants who are dependent on the attorneys to send them reminders. The attorneys are further dependent on the software’s and other work force that act as the support staff. Sometimes, due to docketing error or clerical error or error in communication or some medical exigency one can miss a time-line, although the intention is not to miss the deadline.
Now, are the courts and the Indian Patent Office considerate to such condition of an applicant, lets analyse. The two cases that form the backbone for this analysis is Nokia Corporation v Deputy Controller of Patents and Designs [W.P. No.2057 of 2010 and M.P.No.1 of 2010 – High Court of Madras] (Nokia case), and Nippon Steel Corporation v Union of India [W.P. (C) 801 of 2011 – High Court of Delhi] (Nippon Steel case).
Nokia Case:
In Nokia case an international application designating India, required to be filed within the time limit i.e., 31 months from the date of priority as envisaged under Rule 20(4) of the Indian Patent Rules 2003, missed the deadline for entry.
The petitioner entered the Indian National Phase on 06th November, 2015 while the prescribed time period of 31 months for filing the Indian National Phase Application ended on 20th October, 2015. In light of delay the petitioner filed petitions under rule 137 and 138.
Rule 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.
Rule 138. Power to extend time prescribed. – (1) Save as otherwise provided in the Chapter III of these rules, rule 24B, sub-rule (4) of rule 55 and sub-rule (1A) or 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 the expiry of prescribed period.”
The timelines provided in the Rules are mandatory and not directive in nature. Rule 138 clearly states that the legislative intent is of strict adherence to deadlines by the Applicants, wherein the power of the Controller to grant extension is curtailed for a period of one month only.
In the Nokia case, the learned judge reiterated the facts and categorically stated that if the Controller thinks fit, i.e., upon the applicant showing sufficient cause for the delay, a national phase application in India could be filed within 32 months from the date of earliest priority. In order to do so, a national phase application along with petition under Rule 138 of the Patent Rules, 2003 should be made within one month after 31 months has elapsed from the earliest priority of the international application.
Nippon Steel Case:
In Nippon Steel, based on the priority date of the application, the applicant had missed the Request for Examination (RFE) filing deadline by over eight months. The applicant sought to amend the priority date of the patent application (to a later date) thereby extending the RFE deadline. The controller refused to accept the applicant’s petition, asserting that because the RFE was not filed within the prescribed timeframe the patent application stood “withdrawn” and a petition to amend the priority date could not be entertained.
In Nippon Steel case, the Delhi High court established that “the Court held that time-lines prescribed in the statute and/or the rules are not merely ‘directory’ in nature but rather, are mandatory, which need to be strictly complied with”. The court therefore held that once the 48-month time-period for filing a request for examination (RFE) has elapsed, the patent application was deemed to have been withdrawn under Section 11B (4) of the Patents Act.
We can conclude that the deadlines need to be strictly followed, and unless there is a provision that states otherwise, no such petition shall be entertained. In Spharea Pharma PTE. LTD. and Anr. v. Union of India, that followed after the Nippon case, the Delhi High Court emphatically clarified that the Patents Act, 1970 does not offer any scope for considering a request for patent examination filed beyond the prescribed period of 48 months from the date of filing of the application and reiterated the facts disclosed in the Nippon Case.
In Nokia case, since there was already a provision under Rule 137 and Rule 138 the controller considered the plea of the applicant. Other provisions where time line extension may be sought include:
- Payment of renewal fee under Section 53 (2) under rule 13(6);
- payment of fee under section 142 (4) under rule 80(1A) and 130 is allowed on payment of fee for every month of extension for the maximum period of extension up to three months
- Similarly Rule 24(6) and Rule 24(C)(11) (allows extension of three months. for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).
Therefore, to summarize Patent office have limited flexibility when it comes to matter of extending deadlines delay due to negligence or medical exigency. The possible scenarios where such flexibility can be endured has been mentioned above. Rule 137 and Rule 138 have limited applicability in extending deadlines that pertain to only extending deadlines for National Phase entry, subject to certain limitation and can not be applied to any other provision, this fact was reiterated in Spharea Pharma PTE. LTD. and Anr. v. Union of India.
SO ARE YOU STILL BOTHERING ABOUT CROSSING DEADLINES?
WILL THE PATENT APPLICATIONS SURVIVE?
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