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An interesting question of law involving the interpretation of
section 11-B (1) and (4) of the Patent Act, 1970 (hereinafter the
Act) came up to be decided in a writ petition filed by Nippon Steel
Corporation (Nippon Steel Corporation vs. UOI WP(C) 801 of
2011).
Facts in brief are as follows –
On 9th February 2007, Nippon Steel filed an
application under Patent Co-operative Treaty (PCT) that designates
India as a member. The PCT application claimed priority date of
9th February 2006 from a Japanese Patent Application No.
2006–031911. An Indian National Phase Application was
filed on 11th July 2008 within the prescribed time
period of 31 months from the priority date (as prescribed by Rule
20 (4) (i) of the Patent Rules 2003 (as amended in 2006).
On 22nd August 2008, a request for amendment in the
patent application in terms of section 57 of the Act was made in
Form 13 to correct certain typographical errors.
The date of filing request for amendment (FORM 13), as alleged,
was entered as the date of filing of the Request for Examination
(RFE) (FORM 18). Due to this error the deadline for filing the RFE
was missed. Under Rule 24 B of the Patent Rules 2003, a Request for
Examination has to be made in terms of section 11B (1) of the Act
within a period of 48 months from the date of priority or the date
of the filing of the application whichever is earlier. The due date
for filing RFE would have been 9th February 2010.
On 28th October 2010, an application to amend the
priority date of the application under section 57(5) of the Act was
effected to change the application's priority date to the
international filing date of the PCT Application 9th
February 2007. The idea was that by making this amendment the
deadline for filing RFE would become 9th February
2011.
On 1st November 2010, the RFE filed in Form 18 was
returned as unaccepted by the software module, as the priority date
had not been modified in the said software module.
On 1st February 2011, the Patent Office informed the
applicant that the amendment in the priority date could not be
effected as the application has become time barred and due to
non-filing of the RFE is deemed to be withdrawn under section 11B
(4) of the Act.
The applicant preferred to file a writ petition to quash the
decisions of the Patent Office and to take on record Form 13 to
amend the priority date.
The petitioner contended that under section 57 (5) of the Act
there is no time limit and the amendments, if allowed would only
relate back to the date of the application for grant of patent
Therefore an application for amendment in priority date could also
be filed even in respect of an application that was "deemed to
be withdrawn" in terms of section 11-B (4) of the Act.
Further, stressing on the fact that failure to file RFE was
bonafide, the petitioner argued that rules of procedure could not
be rigidly applied and where only where substantive rights of
parties would be affected, the time limit set by a statute had to
be rigidly applied.
The Court while examining the scheme of section 11-B of the Act
and the corresponding Rule 24-B held that there is nothing in
either of the Rules that gives the power to Controller of Patents
to condone the delay in the filing of the RFE.
Refuting the contention of the petitioner that Rule 137 gives
the power to condone the delay in filing RFE, the Court opined and
that Rule 137 only applies to the amendment of a document for which
there is no special provision in the Act. Section 57 (5) of the Act
does provide for amending the priority date, however the
Petitioner's request for amending the priority date is with a
view to revive the application and indirectly get the time for
filing the RFE extended. Therefore the power under Rule 137 cannot
be invoked by the Controller to permit an amendment to a patent
application that has already been "withdrawn" by
operation of Section 11-B (4) of the Act. Since no RFE was filed
before the expiry of the deadline in terms of Section 11-B (4) of
the Act, the patent application stood withdrawn after
9th February 2010.
The Court further dwelling on the legislative intent viewed that
the time-limits under Section 11-B (1) of the Act read with Rule
24-B of the Rules, notwithstanding Section 11–B (4) of
the Act, are "mandatory" and not merely
"directory". Holding that the Patent law regime is
governed by the Act and Rules which in themselves constitute a
complete code and once an application is deemed to have been
withdrawn by an applicant in terms of Section 11-B (4) of the Act,
the Controller of Patents cannot entertain an application for
amending any portion of such application, the Court dismissed the
writ petition.
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