India: How Deadly Are Patent Office Time Lines?

Last Updated: 10 August 2018
Article by DPS Parmar

Patent offices around all the jurisdictions set a time frame to process and complete the examination of patent application and other proceeding related thereto. Where ever certain difficulties in meeting the statutory time lines is envisaged the legislatures provided for the extension of time for a limited period. The power to grant extension of statutory period rests with the Controller in India. Some of the missed timelines are curable but some are not. Missed time for payment of renewal fee under Section 53 (2) under rule 13(6) and 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.

Section 53

(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.

80. Renewal fees under section 53

(1A) The period for payment of renewal fees so specified in sub-rule (1) may be extended to such period not being more than six months if the request for such extension of time is made in Form 4 with the fee specified in the First Schedule.

130. Application for review of decisions or setting aside of orders of the Controller.—(1) An application to the Controller for the review of his decision under clause (f) of sub-section (1) of section 77 shall be made in Form 24 within one month from the date of communication of such decision to the applicant or within such further period not exceeding one month thereafter as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, the Controller shall forthwith transmit a copy of each of the application and the statement to the other person concerned.

(2) An application to the Controller for setting aside an order passed by him ex parte under clause (g) of sub-section (1) of section 77 shall be made in Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the application is based. Where the order concerns any other person in addition to the applicant, the Controller shall, forthwith transmit a copy each of the application and the statement to the other person concerned.

Rule 13

(6) Except in the case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification, a declaration as to the inventorship of the invention shall be filed in Form 5 with the complete specification or at any time before the expiration of one month from the date of filing of the complete specification, as the Controller may allow on an application made in Form 4.

Explanation.—For the purposes of this rule, the date of filing of the complete specification with respect to an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.

Section 142

(4) Where a principal patent is granted later than two years from the date of the filing of the application, the fees which have become due in the meantime may be paid within a term of three months from the date of the recording of the patent in the register or within the extended period not later than nine months from the date of recording.

Rule 24

(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months 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).

Rule 24(c)

11) The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).

Rule 138 Remedy for missed timelines

Rule 138 of the Patent rules 2003 as amended empowered the Controller of Patents to extend the time prescribed in the rules for a period of one month in certain cases were he deem it fit to do so. But its application is limited to only few provisions. Exceptions to this rule are explicit in excluding extension beyond time prescribed for filing national phase application [31 months]; time fixed by office for filing translation amended claims; time for meeting the office objection under section 21 [Six months with further extension of three months]; time for filing the request for examination [48 months]; time for meeting the office objection under section 21 for expedited examination cases (Six months with further extension of three months]; time for filing statement and evidence, if any, in support of his application [Three months from the date of the notice of opposition]; extension of time period for payment of renewal fees [ six months] and time period for filing application for review of decisions or setting aside of orders of the Controller [one month].In all the above mentioned cases there is no provision for extension of time beyond the time prescribed in the rules .In other words the Controller has no power to extend the time in such cases.

Rule 138 of the Rules reads as under:-

138. Power to extend time prescribed.--(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub- rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, 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 prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.

Missed timelines are fatal

Though the applicants have tried number of times to cure the missed time lines for filing PCT application and even request for examination beyond 48 months, Indian Patent office has been consistent in rejecting such request to cure the delay. In the recent writ petition, in Sphaera Pharma Pte. Ltd and Anr. vs. Union Of India, the Delhi High Court 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. Reiterating its similar stand taken in Nippon Steel Corporation vs Union of India in 2011 the High court confirmed it that missing a statutory timeline is not curable. The high court in clear words observed :-

"Here 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 the Nippon Steel case high court rejected the argument of the of the petitioner for applicability of the rule 138 (1) and rules that

"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."

This clearly indicates that certain timelines are rigid and missing these timelines could be fatal .No statutory remedy is available to cure such an error. The courts are in favour of giving plain meaning to the provisions of rules 138 as we have seen in the Nippon steel case and Sphaera Pharma case.

Deadline for Filing Requests for Examination

Section 11B of the Patents Act, 1970 mandates that a request for examination of a patent application must be filed within 48 months from date of priority or the date of filing of the application (whichever is earlier).Consequence of non-filing of such a request is stipulated in section 11B (1) which conversely state that such application will be not examined and section 11B (4) stipulates that such application would be treated as deemed to have been withdrawn and not pressed by the applicant.

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

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) 4[***] or sub-section (3), the application shall be treated as withdrawn by the applicant:

There is no provision for extension of time for filing request for examination. Such a deadline must be followed as a rule to avoid losing the patent rights. The basic reason for making this time line so rigid is to safeguard the public interest. All the patent application must be examined within the permitted time so as to give finality to grant of right or otherwise.

Conclusion

In Sphaera Pharma Pte. Ltd and Anr. vs. Union Of India, Delhi High Court refused to restore the application stating that rule 138 provision of extension are not applicable to section 24B as a plain reading of sub-rule (1) of the said rule clearly indicates that the power of extension conferred on the Controller under this provision does not extend to the time prescribed under Rule 24B as its application to sub-rules (1), (5) and (6) of Rule 24B is expressly excluded. This perhaps set to rest any lenient view on the provision relating to extension of missed timelines for filing request for examination. Finally, the statutory provision in section 11B (4) would prevail underscoring any speculative reading of the rule 138 relating to the power of the Controller for the extension time for filing the request for examination beyond 48 months. The tag line of this judgement is to caution the applicants to keep track of all the applications for filing request for examination on time. Best solution to avoid such a fatal error would be to file request for examination along with the filling of complete specification. There is no provision in the Patent Act and rules to cure the missed timeline for filing request for examination and certain other provisions as stated above. Patent applicants therefore, are required to be more vigilant not to fall prey to the missed time lines fatality and lose patent right of their precious inventions.

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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