Rule 138 and 137 can be invoked for all National phase applications filed in India prior to Patent [Amendment] Rules, 2016

The Hon’ble High Court of Delhi in a recent order in a writ petition held that where an Indian National Phase Application has been filed prior to the Patent [Amendment] Rules, 2016, the unamended Rule 138 shall be invoked and not the amended Rule 138. It is pertinent to mention here that the amended Rule 138 incorporates Rule 20(4)(i) as an exception i.e. the amended Rule 138 cannot be invoked by the Controller to condone any delay in filing national phase application.

The Court further held that prior to the amendment of Rule 138 applications for extensions or condonation of delay sought under the 2003 Rules, were treated, as an irregularity under Rule 137.

The Court has held that where a request for examination of the patent application has been made before the expiry of the prescribed time period and is returned only for the reason that the fees is not paid in the prescribed mode and manner and such order has been complied by the petitioner. The request shall be deemed to have been filed within the prescribed time period.

In the instant case, the petitioner filed an application for grant of patent in India corresponding to PCT/FR/2014/050623. The petitioner entered the Indian National Phase on 06th November, 2015 while the prescribed time period of 31 months for filing the Indian National Phase Application ended on 20th October, 2015. In light of delay the petitioner filed petitions under rule 137 and 138.

The first issue to be adjucated by the Hon’ble Court was whether the sustainability of application filed on behalf of the petitioner to enter the Indian National Phase under Rule 20(4((i) of the Patent Rules would be examined in light of amended as against unamended Rules.

The amended rule 138 confers power on the Controller to extend time period for a period of one month for condoning the delay in doing any act or taken any proceedings, provided such request is filed prior to the expiry of the prescribed time period. The amended Rule 138 excludes certain deadlines that cannot be condoned under said rule, one of such deadline being rule 20(4)(i) which stipulates time period for filing National Phase Application as being 31 months.

The difference between amended and unamended rule 138 is that the unamended rule 138 does not exclude rule 20(4)(i). The court held that since the National phase application was filed by the petitioner prior to the Patent [Amendment] Rules, 2016, the unamended rule 138 shall be invoked and the Controller has powers to condone delay in filing the National Phase Application within the prescribed time period. Therefore in such case an irregularity for which there is no special provision in the Act can be corrected under Rule 137. Rule 137 confers powers to the Controller to correct any irregularity in procedure. It is for this reason that the petitioner has filed petitions both under rule 137 and 138.

The second issue adjucated by the Court was whether the Controller ought to have processed the request made by the petitioner for examination once the requisite fee was paid by it in the prescribed mode.

In this case the request for examination was filed by the petitioner along with a prescribed fee in the form of banker’s cheque. The Controller rejected said request on the ground that the same was not made in the prescribed mode and manner. The Act requires the Applicant to pay fees only be paid via Demand Draft/ Banker’s Cheque or Cash and transmitted via electronic mode. This communication asking the petitioner to pay the fees by correct mode reached the petitioner only after the expiry of due date of filing the request for examination and the petitioner thereafter within a matter of less than a week paid the fees via the prescribed manner and mode. The Controller rejected the request again on the pretext that the subsequent payment was received after the stipulated time period. The Court held that the Controller erred in rejecting the request for examination for failure of complying with the statutory time limit of 48 months, for the reason that the request was actually made before the expiry of said time limit and was only returned for the reason that the fees was not paid in the prescribed mode and manner. Further, since the first communication rejecting the request was received by the petitioner only after the expiry of stipulated timer period, steps to correct the same could only be taken thereafter. As a result, the Court directed the Controller to take request for examination on record and process the same in accordance with the Act.

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Reasons beyond control necessary for condoning delay in submitting response to Examination report

The Indian Patent office while considering a petition filed by Cisco Technologies under rule 137 for condonation of delay in filing response to examination beyond the statutory period, refused to allow such delay as according to the controller all possible reasons as mentioned by the applicant’s agent such as lack of knowledge about the issuance of examination report or lapse on the part of the previous agent in providing true facts/ First Examination Report, are not the reasons sufficient enough to qualify the status of “beyond the control of applicant” as mentioned in section 21(1) of the Act.

The application was therefore considered to be deemed abandoned under section 21(1) as applicant has not refilled the documents within stipulated time period i.e. within 12 months from the date of issuance of first examination report.

The facts of the case are as follows:-

  • The application 2440/DELNP/2006 was filed on May 01, 2006 claiming priority of USA 10/702,167 dated November 05, 2003 through its agent Evalueserve.com Pvt Ltd.
  • Request for examination was made on October 18, 2006.
  • The First examination report were communicated dated July 29, 2010 to the applicant’s address for service on record.
  • After the issuance of FER, Form-13 was filed on June 22, 2011 to incorporate the change in address for service as applicant has transferred the responsibility to prosecute the matter to Mr. Dinesh Jotwani of M/s Aggarwal Associates.
  • The last date to put the application for grant was over on July 30, 2011 and official requirements were not complied.
  • Petition u/r 137 was filed by the applicant dated September 14, 2011 through patent Agent, for delay in filing the response of examination report read with section 81 of the Patent Act, 1970 within stipulated time i.e. 12 months from the date of issuance of first examination report.
  • Response to first objection report was filed on September 26, 2011.
  • Further Form -13 was filed on February 04, 2015 to incorporate the change in address for service as applicant has once again transferred the responsibility to prosecute the matter to M/s K & S Partners.  

To analyze the decision of the Controller it would be essential to read the following to section:-

  • Section 21(1) says ” An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.” Explanation.-Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.

The agents argued that the delay was unintentional as applicant was unaware of issuance of Examination report.

The argument that applicants were not informed about the issuance of first examination report was not considered sustainable as according to the controller:

  1. Status of every patent application is freely available on patent office website i.e. http://www.ipindia.nic.in.
  2. At the time of filing of Form-13 dated June 22, 2011, more than one month time was available to the applicants to meet the official requirements.
  3. Petition u/r 137 was filed on September 14, 2011 for condonation of delay in filing the response of examination report whereas response to first objection report was not filed along with the petition. The same was filed on September 26, 2011 delayed by further 12 days.

As per the controller the above clearly shows negligence in part of erstwhile patent agent. It is hard to believe that delay caused was unintentional. The term “unintentional “means where the agent of the applicant/ applicant itself was not aware about the issuance of first examination report and the deadline to comply with the requirements as raised in first examination report. The controller further held that it is negligence not only at the part of erstwhile patent agents but also at the part of applicant as well. If it is to be considered that it was the duty of previous agents to transfer all the previous proceedings to another authorised patent agent for processing instant patent application, then applicant is also duty bound to insure for smooth transfer of all related proceedings form one patent agent to other patent agent.

 

Second generation Tygacil granted a Patent

The Indian Patent Office issued its order dismissing two pregrant oppositions filed by NATCO and Lupin against Wyeth for their commercial product, Tygacil.

The application claims a composition comprising: (a) tigecycline; (b) a carbohydrate chosen from lactose, mannose, sucrose and glucose; and  (c) and an acid or buffer, the molar ratio of tigecycline to the said carbohydrate is between about 1:0.2 to about 1:5 and the pH of the composition is between 3.0 and 7.0.

The Controller opined that the application claims a second generation formulation with selective carbohydrate at a low pH with tigecycline. Experimental results in the specification point to epimerization of tigecycline in presence or absence of lactose and also show that in presence of lactose, the epimerization of tigecycline is less and therefore tigecycline is stabler.

The Controller therefore held that the formulation of the instant invention is not a mere admixture but shows synergism /surprising result and therefore cannot be held under section 3(e) of the Act . The results are not predictive from prior art and hence it is inventive too.

The Controller also held that the composition claim does not attract section 3(d) and in this regard relied on the decision of the IPAB in Allergan Inc. Vs. Ajanta. section 3(d) of the Act considers the following not Patentable: –

“(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;”.

The Controller held that the combination mentioned in the explanation of section 3(d) can only mean a combination of two or more of the derivatives mentioned in the Explanation or combination of one or more of the derivatives with a known substance which may result in a significant difference in efficacy. The claimed composition of the instant invention cannot be stated to be a new form of a known substance and therefore does not attract section 3(d).

The order also discussed legal issues, and in particular discussed if a delay of 28 days to file the reply statement and evidence when considering rule 55(4) of the Patent rules should be condoned. The Controller held that the applicant desired to contest the opposition to safeguard their rights (they timely filed a petition for extension of time and correction of irregularity) and for only a little late in filing the reply statement and evidence, and it would not be proper to debar them to contest on this highly technical issues and that will be against the natural justice.