Author Name:   Sugaandh Kochhar

This Article is a Case commentary that aims to explain the powers under Sectipn 11B of the Patents Act,1970.

Iritech Inc. v. Controller of Patents

The Indian Patents Act, 1970, under Section 11B makes way for applicants, of patent application field at the Indian Patent Office, the request the Controller of Patents to examine hi/her application. The normal requests for Patent Examination can be filed within a period of 48 months from the priority date (date of first filing of the invention, can be provisional patent or complete patent on-provisional patent) or date of filing of the patent application whichever is earlier. If the patent examination request is not filed within the specified time limit the patent application shall be treated as withdrawn by the Indian Patent Office. It is mandatory under Patent Act,1970, to file a request for patent examination as per the prescribed timeline.

Another section that this article would like to draw attention to is Section 78 of the Patents Act,1970, that says that the Controller of Patents has the power to correct/amend the clerical errors made in the patent application, after the Applicant has made the request for amendment in the prescribed manner to the Controller. In the recent judgement in Iritech Inc. v. Controller of Patents, Delhi High Court has set aside the ‘deemed to be withdrawn’ status of a patent application and restored the Indian National Phase application. The issue involved incorrect mention of the number of the patent application in Form 18 as well as in its covering letter, and absence of communication from the department seeking correction under Section 78 of the Patent Act,1970. Rejecting the contention of the Patent Office that 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 the present case, the Court observed that if the examiner had examined the application under 11B, in time and 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 errors. It was held that if the Patent Office had struck to the timelines for examination, the patent application would have been in the examination procedure. Further the court also noted 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 procedure or any office action on the patent application.

In Patent Litigation, so far there have been the following major case laws regarding section 11B & 78:
a. Iritech Inc. v. Controller of Patents,2017

b. Ashim Gosh v. controller of parents,2015

c. Glaxo Smith Kline PLC and ors v. Controller of parents and Designs and ors ,2008

d. Nippon Steel Corporation v. Union of India, 2011

Through this article, we aim to discuss the important elements of the Judgment passed by the Delhi High Court in the Iritech Inc. case that try to halt the arbitrary powers of the Controller.

Case Summary:
In this case the petitioner seeked the quashing of ‘deemed to be withdrawn’ application status of his application under S.11B of the act & restoration of his application for the same. He also seeks to direct the respondent to correct clerical errors in his application under Form 18. The Petitioners Company was of Korean origin, they filed the Indian phase of patent application on 18\06\2008.

The petitioner made a request for examination under S.11B on 30\06\2008. The Petitioner contends that during thee follow up actions it was noticed by him and in Form 18 as well as the cover letter, application no. was incorrectly filed.

On 2/01/2010 the Petitioner addressed the Respondent to correct the aforementioned error in the patent application, as prescribed under S.78 of the act. The petitioner enclosed the contends that the Patent Application was not in the examination process when the request was made by the petitioner for the amendment of application u\s 78 of the act. It was also said by the Respondent that the office action u\s 11B<4> ‘deemed to be withdrawn’ was taken due to Petitioner’s non-filling of request for examination for the relevant application, within the prescribed time of four years. It was also submitted the patent agent appointed by the Petitioner had failed to perform his work diligently because when he submitted Form 18, office issued a CBR indicating the application number in which the request was filed and if he had properly checked, he would have noticed the error and notification the office immediately to avoid such a situation.

It was 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 further submitted that the petitioner made a request for request for correction of the error only on 13\02\2012 which has beyond the statuary time period and by that time the patent application was already deemed to have been withdrawn under section 11B (4). It is further contended that as per section 11B of the act any interested person, other than the applicant, can also make a request on Form 18, so there was no reason to doubt that there was any mistake or mismatch in the Form-18 submitted by the petitioner.

The counsel said that for grant of patent, was made on 18\06\2008. The request for examination under section 11B (1) of the act, mentioning an incorrect application number, was made on 30\06\2008. The priority date of the application is 07\01\2006. In terms of rule 24, the application for grant of patent had to be published within one month of expiry of 18 months of the application (i.e. 18\06\2008) or 18 months of the priority dated (i.e. 07\01\2006) whichever is earlier. Under rule 24B, the request for examination under section 11B had to be referred to the examination within one month of the publication. In the instant case, the earlier of the two dates is 07/01/2006, so the publication would have had to happen within one to three months of expiry of 18 months thereof, i.e. within three months of07/07/2007.

The request for examination under Section 11B was filed on 30/06/2008 so the same under Rule 24B would have had to referred to the examiner within one month of the receipt i.e. by 30/07/2008. The examiner would thereafter be required to submit the report within one month. If the examiner had examined the application under 11B of the Act, in time and submitted his report to the controller, it would have been brought to the notice of the Petitioner well before the expiry of 48 months prescribed period, that there was an error in the request for examination and the petitioner could have taken steps to remedy the error.

It was held by the counsel that “the request for examination was filed within the 48-month period and even the request for correction of the clerical error was made prior to the expiry of the period of 48 months and prior to the application for grant of patent being deemed to have been withdrawn. In the view of the above, the action of the Respondents in deeming the Indian National Phase as deemed to be withdrawn was set aside. The ‘deemed to be withdrawn’ status of the petitioner, shall be corrected and the Indian National Phase application. Any reference made therein to Indian National Phase Application No. 6272/DELNP/2008 shall be read as Indian National Phase Application No. 5272/DELNP/2008. The Respondent shall proceed further with the application in accordance with law.”

Interpretation:
In Section 11B (4), where the application is deemed to be withdrawn if a request for examination is not filed within 48 months period form the date of priority; and secondly, Rule 22 of the Patents Rules which says that an International Application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of Rule 20. Rule 20, along with other basic requirements, specify the deadline to enter PCT national phase in India to be 31 months from priority. These two provisions for deemed withdrawal are in addition to the actual withdrawal provision, Section 11B(4)(i), wherein the applicant can withdraw its patent application any time before the grant, and at least 3 months before the publication to withdraw without prejudice. It must be observed that although the above-mentioned provisions for ‘deemed withdrawal’ also deals with the failure of applicant to comply with the deadlines, they are still termed as withdrawal instead of abandonment, could be to confer ’an intention not to proceed’ on part of the applicant and making such failure equivalent to a positive action taken by applicant to withdraw the application instead of counting it as a mere failure, which could be either intentional or un-intentional. These, in practice, are the two strictest deadlines in the Act, which are not condonable by any authority.

End-Notes
# https://www.intepat.com/blog/patent/patent-examination-procedure-india/
# Judgement dated 20-4-2017 in W.P.(C) 7850/2014, Delhi High Court
# http://www.lexology.com/library/detail.aspx?g=bd9442c2-6566-49bd-bc0b-87badc3fc052

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