India: Patent Application Duly Restored By The High Court

"Iritech Inc. V. The Controller Of Patents"-

Introduction:

Recently a patent application "Deemed to be Withdrawn" by the Controller of Patents under Section 11B of the Patents Act, 1970 was duly restored by the Delhi High Court. Request for Examination (RFE) is one of the most critical formal requirements with regards to a Patent Application in India, and if not filed within the prescribed time limit of 48 months from the earliest priority date, the application is considered deemed to be withdrawn by the applicant. There is no recourse to resurrect the patent application once the applicant misses the deadline to file request for examination in an application.

Summary:

In the recent case of Iritech Inc. v. Controller of Patents⁸, the Delhi High Court quashed the "Deemed to be withdrawn" status of the Patent Application and duly restored the Patent application passing the judgment to consider the application now as pending with Patent Office. The clerical error in Request for Examination application and supporting documents are to be considered as corrected and filed in respect of Patent Application No. 5272/DELNP/2008. The issue involves the incorrect mentioning of the number of the patent application in Form 18 as well as in its covering letter i.e. 5272/DELNP/2008 being mistakenly mentioned as 6272/DELNP/2008. Accordingly application 5272/DELNP/2008 in absence of Form-18 filing was considered by the Patent Office as "Deemed to be withdrawn". However, the Agents on record noticed the clerical error in Form18 and filed the request for correction of the clerical error under Section 78 with the Patent Office within the time period of 48 months from priority date. There was no response received from Patent Office with regards to correction in clerical error and subsequently the status of the application was updated as "Deemed to be withdrawn".

The Delhi High Court rejected the contention of the Patent Office that the power of the Controller to correct clerical errors can only be exercised when patent application is in examination procedure, and hence no office action was possible in present case. The Court mentioned that if the Patent Office had examined the application under Section 11B, in time and the examiner submitted his report, it would have been brought to the notice of the Petitioner well before the expiry of 48 months prescribed period and the petitioner could have taken steps to remedy the error. If the Patent Office had stuck to the timelines for examination, the patent application would have been in the examination procedure. The Court also observed that since there is no form prescribed by the Act or the Rules for seeking correction under Section 78, even a letter would be sufficient, and that a request under Section 78 is not dependent on the examination or any office action in the patent application. In this case the "erroneous" request for examination was filed within the time period of 48 months and also the request for correction of clerical error was filed well before the expiry of said period.

Case Note⁹:

The Petitioners filed the Indian National Phase Patent Application on 18/06/2008. The petitioner made a request for examination under Section 11B of the Patents Act, 1970, on 30/06/2008.

On 02/01/2010, the petitioner/applicant filed a request for correction of the aforementioned error in the patent application, as prescribed under Section 78 of the Act. Along with the said request for correction, the petitioner enclosed the corrected Form 18 and the covering letter with the prescribed fee of INR 2000. The petitioner contends in the present case that there was no communication to him by the respondent.

On 02/02/2010, the petitioner obtained the search report from the website of the IPO which stated the application was 'deemed to be withdrawn'.

The respondent/ the Patent Office declined to entertain the request of the petitioner for correction of the application number which led to filing of the petition.

The respondent submitted that the request for correction made by the petitioner by letter dated 02.01.2010 was not the proper procedure to make corrections under the Act.

It is to be noted that the request for examination was filed within the 48-month period and the request for correction of the clerical error of the patent application number was also made prior to the expiry of the period of 48 months and prior to the application being "deemed to be withdrawn".

In view of the above, the High Court ordered to set aside the status of the application as "deemed to be withdrawn" and restored the said patent application and the same shall be considered as "pending" at the Patent Office.

Footnotes

8 Judgment dated 20-4-2017 in W.P. (C) 7850/2014, Delhi High Court

9 2017 (70) PTC 237 [Del]  

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