India: File Request For Examination In A Patent Application Within Stipulated Time

The Hon'ble High Court of Delhi has yet again emphasized on adherence of prescribed timelines under the Patents Act and Rules.

In a recently reported order by the Hon'ble Mr. Justice Vibhu Bakhru of the Delhi High Court, it has been underlined that a request for examination in an application for patent shall be filed within the prescribed time limit of 48 months and there is no exception or extension of time available under the law. The case in reference is Sphaera Pharma Pte. Ltd and Anr. Vs. Union of India & Anr., wherein Sphaera Pharma (hereinafter 'Petitioner') filed a writ petition to restore the Indian patent application No. 3584/DELNP/2015. The Petitioner had admittedly failed to file the request for examination (Form 18) within the prescribed period of 48 months from the earliest priority as per Rule 24 of the Patents Rules, 2003 (hereinafter 'Rules').

Facts of the case: The Petitioner filed Application no. 3114/DEL/2012 at the Indian Patent Office on October 05, 2012. Taking priority from the said application, a PCT International application was filed and thereafter a PCT national phase application in India was filed (Application No 3584/DELNP/2015). For the said application, as per Rule 24, the Petitioner was required to file a request for examination (RFE) within 48 months from the date of the priority (October 05, 2012), i.e. RFE should have been filed by October 05, 2016.

The Petitioner, upon missing the said due date, tried filing Form 30, however, he was unable to upload the said Form 30 due to a technical error and the status of the said application reflected as "Application abandoned under Section 11B". Aggrieved by the same, the Petitioner filed a petition for review of said patent application, which has not been considered by the Patent Office and the same has led to the present writ petition.

Observations by the Court: The Court while relying on "Section 11B. Request for examination -- (1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period", observed that it is apparent from the language of Section 11B(1) that the consideration of any application for examination beyond the prescribed period is not proscribed.

The said period within which the application has to be made is prescribed under Rule 24B of the Rules, which reads "24B. Examination of application.--(1)(i) A request for examination under section 11B shall be made in Form 18 [within forty-eight months] from the date of priority of the application or from the date of filing of the application, whichever is earlier. ...". Accordingly, it is clear that there is no scope for considering a request for examination beyond the prescribed period of 48 months from the date of application. Concededly, the petitioner's request was beyond this period.

The Court also refused the contention that a period of one month's extension shall be allowed under Rule 138 stating that "it is at once apparent that recourse to Rule 138 of the Rules is not available to extend the time prescribed under Rule 24B of the Rules. This is clear from the plain language of Rule 138 of the Rules, which expressly excludes its application to Sub-rules (1), (5) and (6) of Rule 24B of the Rules."

The Court has upheld its view taken in Nippon Steel Corporation v. Union of India: 2011 (46) PTC 122 (Del), wherein the Court observed as under:

There is a logic to the time limits set out under the Act. The scheme of the Act and the Rules require time-bound steps to be taken by applicants for grant of patent at various stages. The provisions of the Act and the Rules have to expressly reflect the legislative intent to permit relaxation of time limits, absent which, such relaxation cannot be 'read into' the provisions by a High Court exercising powers under Article 226 of the Constitution.

In other words, it is not possible for this Court to accept the submission of the learned Senior Counsel for the Petitioner 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 merely 'directory' and not mandatory. In fact, the wording of Section 11-B (4) of the Act underscores the mandatory nature of the time limit for filing an RFE in terms of Section 11- B (1) of the Act read with Rule 24-B of the Rules.

In view of the above, the Hon'ble Court dismissed the writ petition as being unmerited. To conclude, the Indian Courts have time and again decided that the timelines and due dates prescribed under the Patents Act and the Patents Rules are mandatory, and the same shall be adhered to by the Applicants and/or Patentees in strict sense.

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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