India: Case Studies: Late National Phase PCT Entry In India

Introduction

A crucial step post filing an international PCT application is the entry into the National Phase. Following the conclusion of the international PCT procedure, the Applicant generally on an average has around 30-31 months to file the National Phase Application. This timeline however, varies from country to country.

It's crucial to meet the requirements for filing applications in the National Phase before the stipulated deadline. Failure to adhere to this timeline may result in the application being considered abandoned or withdrawn. Similar to the general practice, India imposes a strict 31 month deadline from the priority date, with no provision for late entry into the National Phase. It maintains a stringent stance on patent deadlines, emphasizing the need for adherence to ensure smooth processing of National Phase patent applications.

However, despite this strict framework, there have been instances where delays in National Phase entry were condoned. This article aims to analyse these instances through case studies, shedding light on the exceptions within the context of patent application timelines.

Nokia Corporation v. Deputy Controller of Patents and Designs (2011)

In the Nokia Corporation case, the issue revolved around the late national phase entry of the PCT application. While assessing the issue, the court looked at Rule 20(3) of the Patents Rules 2003, according to which, an application related to an international application designating India must be filed with the prescribed fee within the specified time limit, i.e., 31 months from the priority date, as outlined in Article 2(xi) of the PCT and Rule 20(4) of Indian Patents Rules.

The Deputy Controller of Patents and Designs interpreted these rules, concluding that Rule 22 of the Patents Rules 2003 restricts filing a National Phase application after the prescribed time. Rule 22 stipulates that the application is deemed withdrawn if it exceeds the time under Rule 20, indicating non-compliance with the requirements. In this case, the petitioner's National Phase application deadline expired on 11.08.2009. Accordingly, the office returned the documents on 21.08.2009. Subsequently, the petitioner filed an online application on 10.09.2009, taking advantage of the newly introduced online filing procedure. Alongside this, the petitioner submitted a petition under Rule 137 and 138 to condone the delay in filing the National Phase application, also requesting a personal hearing.

In its order, the Deputy Controller held that the petitioner admitted a drafting error in the computer caused the delay, despite timely instructions from the client. The petitioner contested the order, and argued that the National Phase application could be filed within 31 months, with a request for a one-month extension under Rule 138, and if necessary, a petition under Rule 137 for condonation of irregularity could be filed before the prescribed one-month period elapsed. Another contention was that Rules 137 and 138 granted discretionary power to the Controller to condone the delay for one month after the prescribed time for substantial justice.

The Deputy Controller rejected the petitioner's contentions, stating that Article 48 and Rule 82 of PCT Regulations only provide immunity in cases of delay in mail service or unavoidable loss or interruption in mail. Further, the remaining provisions leave it to the discretion of National offices to decide on merits whether to process the application or not. The Deputy Controller, citing Article 48 and Rule 82 of PCT regulations, interpreted the Patents Rule, asserting that the Controller could only condone the delay in cases involving mail service delay, and that the delay due to a docketing error could not be condoned according to Rule 6(5) of the Patents Rules 2003.

The court examined the Deputy Controller's decision and found it unsustainable. It argued that Article 48 and Rule 82 of PCT Regulations could only be binding in India if enacted under Article 253 of the Constitution. In this case, statutory rules were in place, and the Deputy Controller should have based the decision on these rules rather than applying Article 48 and Rule 82 of PCT Regulations.

The court held that the application of Rule 6(5) of the Patents Rules was incorrect, emphasizing that it operates in a different context. Rule 138 granted the power to extend time by one month, while Rule 6(5) dealt with accepting applications due to mail delays without the need for an order.

The Deputy Controller's assertion that condoning the delay under Rules 137 and 138 would set a wrong precedent and be detrimental to the public was deemed erroneous by the court. It held that the Deputy Controller misinterpreted Rule 138, which grants the power to extend time by one month based on sufficient cause. In conclusion, the court quashed the impugned order and the Deputy Controller was to reconsider the application under Rules 137 and 138 within the one-month period, as provided by Rule 138. The court emphasized the need for a decision based on merit in accordance with the law, highlighting that Rule 6(5) or Article 48 and Rule 82 of PCT do not govern the powers under Rule 138, which involves quasi-judicial authority.

Parikumar v. Controller General of Patents (2013)

The appellant, discontented with the rejection of their PCT application due to formatting issues and insufficient fees appealed to the IPAB (presently abolished) to quash the Controller's order. The application faced initial rejection on May 4, 2011, and subsequently on December 27, 2011, on the grounds that the prescribed 31-month period had elapsed. The appeal contested this decision and sought direction from the Board to the respondents to accept the application.

The erstwhile IPAB overturned the Indian Patent Office's rejection which was based on insufficient fees, improper format, and delay upon resubmission. According to Section 15 of the Indian Patent Act, the Controller had the authority to refuse a deficient application or ask the applicant to amend it. In this case, the applicant submitted fees for only 17 claims out of the 20 included in the application during the national phase entry.

The Board deemed the Controller's rejection for insufficient fees unreasonable, as the Controller did not give the applicant an opportunity to rectify the deficiency, which might have resulted from a miscalculation. While the Board didn't delve into whether the Office should have allowed a 1 month extension to rectify insufficient fees, it noted the applicant's willingness to delete three claims. Given that the 31 national phase entry deadline had passed and the applicant had no way to correct his deficiency and re-file, the Board granted the appeal, instructing the Patent Office to permit the applicant to delete the desired three claims and enter the national stage with the remaining 17 claims in line with the fees paid.

Tryton Medical Inc. v. Union of India & Ors (2017)

The case revolves around the petitioner seeking a writ of mandamus against the respondents, including the Controller of Patents, to enforce the orders of the Intellectual Property Appellate Board (IPAB, presently abolished). The petitioner filed a PCT application and subsequently was required to file the National Phase Application in India within the 31 month filing deadline. However, the petitioner was 8 days late, and along with the National Phase Application, filed a request for condonation of delay for the 8 extra days.

However, the Controller rejected the application citing the 8-day delay, which the IPAB later allowed in its decision on March 24, 2015. Despite the IPAB's directive to examine the application, the Controller did not comply. The IPAB, in its second order on March 7, 2016, criticized the deliberate violation of judicial discipline by the Controller and directed compliance. Despite this, the Controller did not give effect to the IPAB's directive, leading the petitioner to approach the High Court through a writ petition.

The High Court, recognizing the petitioner's right to ensure compliance with IPAB's orders, emphasized the importance of following appellate authorities' directives. The court granted the writ petition, instructing the concerned authorities to adhere to the IPAB's orders and proceed with the examination of the petitioner's National Phase Application, with the condonation of delay.

Conclusion

In conclusion, the case studies presented highlight the intricacies and challenges associated with late entries into the National Phase of the PCT application process in India. The stringent deadlines set by Indian patent laws, in this case particularly the 31 month limit, underscore the need for timely compliance to ensure efficient administration. The stringent timeline however, has been condoned in certain cases where due cause has been shown by the applicants.

The case studies highlighted above show the court's as well as the erstwhile IPAB's nuanced examination of whether the condonation is to be granted or not. The various factors which are assessed include insufficiency of fee, irregularity in formatting etc which may be rectified. The Court has also looked at principles of substantial justice while condoning such delays and allowed instances where the delay causing irregularities could be fixed. Moreover, an important aspect covered is the adherence to judicial discipline in case such delays are condoned by judicial or quasi judicial bodies. Since the National Phase entry of PCT applications is a crucial aspect, especially when the timelines stipulated are strictly enforced, it is important to gauge the factors courts look at while determining whether to condone a delay or not.

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.