In an attempt to assert one's rights in a patent, the recent case of Nokia Corporation Versus Assistant Controller Of Patents And Designs 2009(41) PTC102(IPAB) witnessed the Intellectual Property Appellate Board grant an order permitting appeal and further directing the Assistant Controller of Patents and Designs to grant patent. The present suit was brought before the Appellate Board in respect of alleged infringement being caused to the rights of appellants, Nokia Corporation, by the Assistant Controller of Patents and designs, respondent. Nokia had entered into the national phase in various countries including India. Assistant Controller examined the national phase application and certain objections both technical and formal regarding the procedural matters were pointed out. The dispute arose because Nokia submitted the date of filing ofthe national phase application in India based on international Patent Cooperation Treaty application. Assistant Controller of patent objected to this on the ground that the international filing date shall not be considered as the filing date of national phase. Assistant Controller granted Nokia a chance to be heard. Even though Nokia provided full details regarding the actual date of filing of national phase the Assistant controller refused to grant patent on the ground that applicant had given false information and failed to disclose the necessary information to the Assistant Controller as per Section 8 of Patents Rules 2003.
The Nokia averred that the Assistant Controller violated the international laws and national laws. The learned counsel representing Nokia alluded to Article 11 (3) of the Patent Cooperation Treaty which states that the international filing date shall be considered as the actual filing date of the national phase application filed in each designated state and to Section 7 and Section 138 (5) of the Act which mentions about the filing date of the application filed as a national phase application in India based on international PCT application.
Nokia further contented that other international patent offices had confirmed the date of application of these national phase application as the international filing date. In this pursuance Nokia Corporation enlightened upon Section 53 of the Act and stated that the term of the patent once granted on the national phase application will be calculated from the international filing date accorded under the PTC and not from the date of filing of national phase application in India
However Assistant Controller of Patents contented that on the international date of filing there existed no national phase application and that the national phase application was filed subsequently thus the appellant did not have the right to change the national phase entry date given by the National Patent Office with date of the international filing. It was further contented that Nokia failed to disclose correct information to the Assistant Controller as required under Section 8, but actually furnished information which was false to his knowledge leading to the rightful refusal of the application for grant of Patent.
On comparison of claims, the Appellate Board held that refusal of patent would put Nokia Corporation into terrible loss and also such a judgement would become a wrong precedent in patent procedure. The Board mentioned that Nokia Corporation had not failed in its duty to disclose information to the Assistant Controller as stipulated by Section 8 of Patent Rules 2003. Such information furnished being correct to the knowledge of the Assistant Controller. The Board further opinioned that according to PTC provisions, such as Section 1(1B) and 11(3) the international filing dates shall be considered to be the actual filing date in each designated state. In this veiw the Board allowed the appeal without costs and the impugned order of the Assistant Controller was set aside, further directing him to grant a Patent.
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.
