India: Powers Vested In The Controller Under The Patents System

The Controller of Patents is the principal officer responsible for administering the patent system in India. The Controller is the overall supervisor of the four Indian Patent Offices in Chennai, Delhi, Mumbai and Kolkata.

The powers of the Controller includes the power: to receive, acknowledge, accept, publish and examine a patent application, claim, description and specification, to make search and investigate for anticipation by previous publication and by prior claim to consider the report of the examiners; to refuse application or require amended application, in certain cases to make orders respecting division of application; to make orders respecting dating of applications; to make orders regarding substitution of applicants; to issue written permit to a person resident in India to make an application outside India for the grant of a patent for an invention; to grant patent to name a few.

1.1THE GENERAL POWERS OF CONTROLLER

The powers of the controller are generally enumerated in Section 77 of the Patents Act, 1970. He shall have certain exercising powers of a Civil Court under the CPC, 1908 while trying a civil suit. These include summoning of witnesses and enforcing the attendance of witnesses; Receiving evidence on affidavits; Issuing commissions for the examination of witnesses of documents; Awarding costs; etc.

This also includes power to Review his own decisions on application made within the prescribed time and in the prescribed manner and setting aside an order passed ex-parte on application made within the prescribed time and in the prescribed manner; sub section 2 also makes it clear that orders passed by the Controller shall be executable as a decree of a Civil Court.

Section 78 provides for correction of any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register. In the case of Press Metal Corporation Limited v. Noshin Sorabji Pochkanwalla1, it was held that the power to correct clerical errors under Section 78(1) does not extend to make amendments suo moto. Thus, amendments have to be strictly made only under Section 57 of the Act.

In the case of AIA Engineering Ltd. v. Controller of Patents2, it was held that, while purporting to exercise powers under Section 78 of said Act, there could not be any amendment of application as in that eventuality procedure of Section 57 read with Section 59 of said Act must be followed - There appears to be also absence of any power of Controller to make any amendment suo motu - Therefore, impugned order could not be sustained as it suffers from a patent error and improper exercise of jurisdiction by Assistant Controller and was liable to be set aside. "While exercising powers under Section 78 of the Patents Act, which permits correction of clerical errors, amendment is not permissible for allowing amendment the procedure of Section 57 read with Section 59 of the Act must be followed.»

1.2 DISCRETIONARY POWERS OF THE CONTROLLER

1.2.1 Discretionary power of the controller under Section 3(d)

In the case of Novartis Ag v. Union of India3, the court held that Section 3(d) did not violate Article 14 of the Constitution of India and was not vague or arbitrary, and did not confer uncontrolled discretion to the Patent Controller. The court rejected Novartis's arguments that Section 3(d), which denies patents to new uses of known substances unless the patentee can show "enhancement of the known efficacy" or "differing significantly in properties with regard to efficacy," was ambiguous and unclear. The court emphasized that discretionary power did not necessarily mean that it would be discriminatory. The Patent Controller's discretionary power under Section 3(d) in deciding whether a known substance has enhanced efficacy did not automatically lead to an arbitrary exercise of discretionary power or discrimination against Novartis.

1.2.2 Discretionary power of the controller under Rules 137 & 138

Section 80 deals with how discretionary powers should be exercised by the Controller. It specifically refers to applications of Patents and amendments of Patents. The controller has to give the parties an opportunity of hearing.

Section 81 gives power to the controller to extend time. And no appeal shall lie from the order of the Controller granting extension.

In the case of Nokia Corporation vs Deputy Controller Of Patents and Designs4, it was held that Courts and statutory authorities were to do substantial justice - Object of Rule 138 was that prescribed time under Rule 20 could be extended by period of one month on showing of sufficient cause - Therefore, it was discretion of Controller to extend period on facts and circumstances of case - However, it was not correct on part of Deputy Controller to have rejected Application, by treating it to be not maintainable, as having been filed after expiry of prescribed time under Rule 20 of the Patents Rules - Thus, impugned order was quashed and case was remanded back to Deputy Controller to decide Application moved under Rules 137 & 138 in accordance with law. "Authority shall not reject application for condonation of delay if application is filed after prescribed delay."

In the case of Nippon Steel Authority v. UOI5, it was held that there is no time limit prescribed for filing application for amendment of priority date, it does not mean that such application can be filed even after patent application ceases to exist in law – Once application is deemed to have been withdrawn by applicant in terms of Section 11-B (4) of Act, Controller of Patents cannot entertain application for amending any portion of such application - It is not possible to accept submission of petitioner that Controller of Patents is bound to allow amendment at any time, even after deemed withdrawal of such application, and that once such amendment is allowed it would relate back to date of filing of application and thereby revive the application –

It is beyond doubt that Controller of Patents could not have, after deemed withdrawal of Petitioner's patent application, permitted it to amend priority date of such application, Petitioners could not be held to have abandoned their claims for purposes of Section 21 of the Act. As far as the present case is concerned, Petitioner missed deadline for filing RFE, Court finds no error whatsoever in the impugned decisions of Controller of Patents to decline Petitioner's request for amendment of priority date - Writ petition is without merit and it is dismissed.

1.3 Power of the Controller under Section 8(2)

Section 8 (2) gives power to the Controller to ask for any information regarding the 'processing' of the application in a country other than India at any time before the grant of patent. Section 8 (2) of the Act and rule (12) of the Rules provides discretionary power conferred upon the controller and hence an applicant has to make sure that the information is submitted to the satisfaction of the controller. The controller has conferred with the powers to sustain the objection or reject the grant if he is not satisfied with the extent of the information disclosed.

In the case of Chemtura Corporation vs. Union of India6, the Delhi High Court on the question of submission under section 8 (2) held that the applicant was required to periodically update the controller on the current status of the corresponding foreign application. Mere simply filing of information on the status of the application will not fulfill the obligation under section 8 (2) of the Act. Applicant is required to submit all foreign search reports.

In Tata Chemicals vs. Hindustan Lever7, the petitioner argued that the respondent had not filed the International Preliminary Examination Report (IPER) and hence not full filled the section 8 obligations. The Intellectual Property Appellate Board (IPAB) held that the IPER is related to the processing of an application in country outside India and the word processing is an all encompassing word, it would take within it a series of actions to be taken in order to achieve a particular result. Therefore the respondent is required to file the IPER in order to comply with the requirements of section 8(2).

1.4 The powers of the Controller under Section 17

Under this the Controller has the power for postdating an application which are fettered by the provision of Section 9(1) that a complete specification must be filed within 12 months from the date of filing of the application. This issue was considered in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd8, wherein the judge while considering the provisions of postdating clearly stated in paragraph 8 that "The aforesaid provisions make it crystal clear that postdating of the patent can be done only to the date of filing of the complete specifications". This makes it clear that the date of the provisional specification cannot be postdated.

2. Other Powers

Power of the Controller of Patents includes

  • Power to remedy a clerical error committed during prosecution.
  • Power to issue compulsory licenses, power to adjourn applications for compulsory licenses, power to strike out any stay proceedings.
  • Power to call information from patentees.
  • Power to revoke surrendered patents.
  • Power of controller to give directions to coowners of patents.
  • Power of controller to refuse or ask for amended applications etc.

CONCLUSION

An amendment was brought in the Patents Act, in the year 2005, the new law states that the Controller of Patents has a series of wide-ranging discretionary powers to determine all kind of criteria like reasonable affordability, reasonable pricing, and reasonable royalty. These powers are nor arbitrary and the general powers of the controller are that of a Civil Court under the CPC 1908.

Footnotes

1.AIR 1983 Bom 144

2.2007(34)PTC457(Del)

3.MIPR2009(2)345

4.2011(46)PTC70(Mad)

5.2011(46)PTC122(Del)

6.2009(41) PTC 260(Del)

7.ORA/18/2010/PT/MUM

8.(AIR 2000 Delhi 23, 80 (1999).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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