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Delhi High Court Decides upon Delay in Filing a Patent Examination Request
The question regarding the condonation of delay in the filing a request for examination of a patent application was once again decided by the Hon’ble Delhi High Court in the case of Sphaera Pharma, Pte. Ltd. And Anr.Vs Union Of India. The Hon’ble Mr. Justice Vibhu Bakhru decided upon the issue pertaining to the limitation period for the examination of a patent application prescribed under the Patents Act, 1970 (“Act”).
Sphaera Pharma (the Petitioner), claimed that they had developed some new compounds which were useful in the treatment of cancer. The Petitioner, thereafter, filed a patent application (no.3114/DEl/2012) with the Indian patent office on 05.10.2012. Accordingly, the Petitioner was also required to file a request for the examination of the patent application within 48 months from the date of filing the initial patent application.
The Petitioner had also filed Form 30 with respect to the Patent Application so that the request for examination could be taken on record. However, the said request was not uploaded due to some technical reasons and as a result the patent application was shown as abandoned under Section 11B of the Act. Thereafter, the Petitioner filed a review petition for its patent application which was not considered by the Patent Office. The Petitioner, aggrieved by the Patent Office, filed a writ petition before the Hon’ble Delhi High Court for the restoration of the Patent application. The Petitioner contented that the Controller of Patents had the power under Rule 138 of the Patent Rules, 2003 (“Rules”) to extend the prescribed time period, for filing a patent examination request, for a period of one month.
The Court critically examined the language of Section 11B of the Act along with Rule 24B of the Rules and held that a plain reading of both the provisions clearly depict that there is no scope for consideration of any application for examination which is filed beyond the prescribed time period (48 Months) from the date of filing of the Patent application.
The Petitioner’s contention regarding power of the Controller of Patents under Rule 138 was rejected by the Court. In this regard, the Court held that a plain reading of Rule 138 would clearly show that the power of the Patent Controller to extend the prescribed time period under the said Rule does not extend to the time prescribed under Rule 24B as it expressly excludes sub-rules (1), (5) and (6) of Rule 24B. The court also opined that even if Rule 138 is ignored, no recourse is available to the Petitioner under Rule 138 as, according to Rule 138(2), it only applies to the examination requests which are made before the expiry of the prescribed time period. In the present case, the Petitioner had not made any such examination request within 48 months from the date of filing of the Patent application.
Thereafter, the Court took reference to a previous judgement in the case of Nippon Steel Corporation v. Union of India, wherein there was an error in entering the priority date of the Patent. The relevant excerpt of the judgement is below:
“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.”
The Court discussed the Nippon case judgment and clarified that the time-limit prescribed under the Act for filing a Patent examination request is mandatory in nature and cannot be relaxed under any circumstances.
The Delhi High Court has re-affirmed the issue regarding time limit for filing a request for examination of a Patent application. The Court has clarified that the time limit of 48 months is mandatory in nature and must be adhered to regardless of the delay caused due to any technical reason, any error in entering the priority date for the Patent or due to any other reason. The time limits are prescribed for a purpose and thus they must be followed by the applicants strictly. However, considering the problems which arise due to technical reasons, there must some alternate recourse available to the applicants for filing the request for examination of Patent application after the termination of the prescribed time period.
 2011 (46) PTC 122 (Del)