MIPR2017(3)1,
2017(70)PTC237(Del)
IN THE HIGH COURT OF DELHI
Decided On: 20.04.2017
Appellants: Iritech
Inc.
Vs.
Respondent: The Controller of Patents
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: S.K. Bansal and Ajay
Amitabh Suman , Advocates
For Respondents/Defendant: Akshay
Makhija , CGSC and Shivi Sanyam , Advocate
JUDGMENT
1. The Petitioner by
the present petition seeks quashing of the "deemed to be withdrawn"
status of the application No. 5272/DELNP/2008 under section 11B of the Patents
Act, 1970 (hereinafter referred to as the Act) and seeks restoration of the
said application and for proceeding further with the same. The Petitioner also
seeks a direction to the respondents to correct the clerical/typographical
error in the number of the Patent application in Form No. 18 and other
documents to read as 5272/DELNP/2008.
2. The petitioner on
08.01.2007 filed an application in the Patent Office of the Republic of Korea,
in respect of invention titled "IRIS IDENTIFICATION SYSTEM AND METHOD
USING MOBILE DEVICE WITH STEREO CAMERA" for grant of Patent under the
Patent Co-operation Treaty vide PCT Application No. PCT/KR2007/000099.
3. On 18.06.2008, the
petitioner filed the Indian National Phase Application No. 5272/DELNP/2008. The
priority date in respect of the Indian National Phase Application was shown to
be 07.01.2006 and the PCT international filing date was shown to be the date of
the filing of the Korean Patent i.e. 08.01.2007.
4. The Petitioner on
30.06.2008 made a request, under Section 11B (1) of the Act on Form 18 under
the Patent Rules 2003 (hereinafter referred to as the Rules) for substantive
examination of the said Indian National Phase application.
5. It is contended by the
Petitioner that during the follow up actions, it was noticed that in Form 18 as
well as in its covering letter, the number of the Indian National Phase
application had been incorrectly typed as 6272/DELNP/2008 instead of
5272/DELNP/2008.
6. On 02.01.2010
(incorrectly dated as 02.01.2009), the petitioner addressed a letter to the
Respondent bringing to its notice the aforesaid error of the Patent application
number in Form 18 and requested the Respondent to treat the request for
substantive examination on Form 18 and the payment made there under, in
relation to Patent application No. 5272/DELNP/2008 instead of No.
6272/DELNP/2008. The letter sought correction under Section 78 of the Act and
was accompanied with the prescribed fee of Rs. 2,000/- for carrying out the
correction under Section 78 of the Act. The Petitioner also enclosed therewith
the corrected Form 18 and the covering letter. It is contended that thereafter
there was No. communication from the side of the Respondents.
7. Subsequently on
02.02.2010, the petitioner obtained the search report of the aforesaid
application from the official website of the Indian Patent Office wherein the
application was shown as "deemed to be withdrawn" under Section 11B
(4) of the Act.
8. By email dated
30.01.2012, the Assistant Controller of Patents and Designs informed the
petitioner that the documents filed by the petitioner seemed to relate to the
Patent Application No. 5272/DELNP/2008 but had been filed mentioning the
application No. 6272/DELNP/2008, which did not belong to the petitioner. The
Assistant Controller also informed that the petitioner may face difficulty in
meeting the time lines for filing Form 18 and informed that necessary remedial
steps be taken.
9. The petitioner by letter
dated 13.02.2012 requested the Respondent to make necessary corrections in
terms of its aforesaid letter dated 02.01.2010 (sic 02.01.2009). The petitioner
also requested that the status of the application be corrected. The Respondents
declined to entertain the application of the petitioner leading to the filing
of the present petition.
10. The Respondents in
their counter affidavit have contended that under Section 78 of the Act, the
Power of the Controller to correct clerical errors can only be exercised or
made to effect, when the patent application is in examination procedure. It is
contended that as the patent application was not in examination on the date of
filing of the request under Section 78 i.e. on 02.01.2010, there was No. office
action possible on the petitioner's patent application.
11. It is submitted that
the priority date of the patent application No. 5272/DELNP/2008 was 07.01.2006
and consequently the last date, for filing Form-18 (Request for Examination)
was 07.01.2010 and the requisite form-18 was never filed in the said patent
application consequently the application had become "deemed to be
withdrawn" on the expiry of 07.01.2010.
12. It is submitted that
the office action under Section 11B(4) (deemed to be withdrawn) is the outcome
of inaction on the part of the petitioner due to non-filing of the request for
examination for the relevant application, within the prescribed period of four
years. It is contended that the petitioner's authorized patent agent had not
acted diligently for the reason that when he submitted Form 18, office issued a
CBR (Receipt) indicating the application number in which the request was filed
and if he had properly checked, he would have noticed the error and notified
the office immediately to avoid such a situation.
13. It is submitted that
the request for correction made by the petitioner by letter dated 02.01.2010
(sic 02.01.2009) was not the proper procedure to make corrections under the
Act. It is further submitted that the petitioner made a request for correction of
the error only on 13.02.2012 which was beyond the statutory time period and by
that time the patent application was already deemed to have been withdrawn
under Section 11B(4). It is contended that the petitioner's agent should have
filed a request for examination in prescribed manner afresh, within the
prescribed period of four years, to seek correction of the mistake.
14. 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.
15. Reliance is placed by
counsel for the Respondent on the decision of a coordinate bench of this court
NIPPON STEEL CORPORATION VERSUS UNION OF INDIA: MANU/DE/0712/2011 : 2011 III AD
(Delhi) 226, to contend that the Controller of patents is not competent to
allow the application for amendment after the patent application is deemed to
have been withdrawn.
16. To resolve the
controversy we would need to examine the scheme of Sections 11 B, 12 of the
Act, Rules 24 B of the Rules pertaining to making a Request for Examination and
Section 78 pertaining to power of controller to correct errors.
17. Section 11B of the Act
which deals with request for examination and section 12 which deals with
examination of the applications read as under:
"Section 11B. Request
for examination
(1) No. application for a
patent shall be examined unless the applicant or any other interested person
makes a request in the prescribed manner for such examination within the
prescribed period.
(2) Omitted by the Patents
(Amendment) Act, 2005
(3) In case of an
application in respect of a claim for a patent filed under sub-section (2) of
section 5 before the 1st day of January, 2005 a request for its examination
shall be made in the prescribed manner and within the prescribed period by the
applicant or any other interested person.
(4) In case the applicant
or any other interested person does not make a request for examination of the
application for a patent within the period as specified under sub-section (1)
or sub-section (3), the application shall be treated as withdrawn by the
applicant:
Provided that--
(i) the applicant may, at
any time after filing the application but before the grant of a patent,
withdraw the application by making a request in the prescribed manner; and
(ii) in a case where
secrecy direction has been issued under section 35, the request for examination
may be made within the prescribed period from the date of revocation of the
secrecy direction.
12. Examination of application.--
(1) When a request for
examination has been made in respect of an application for a patent in the
prescribed manner under sub-section (1) or sub-section (3) of section 11B, the
application and specification and other documents related thereto shall be
referred at the earliest by the Controller to an examiner for making a report
to him in respect of the following matters, namely:--
(a) whether the application
and the specification and other documents relating thereto are in accordance
with the requirements of this Act and of any rules made there under;
(b) whether there is any
lawful ground of objection to the grant of the patent under this Act in
pursuance of the application;
(c) the result of
investigations made under section 13; and
(d) any other matter which
may be prescribed.
(2) The examiner to whom
the application and the specification and other documents relating thereto are
referred under sub-section (1) shall ordinarily make the report to the
Controller within such period as may be prescribed.
18. Section 11B of the Act,
inter-alia, prescribes that No. application submitted for grant of a patent
shall be examined unless the applicant or any other interested person makes a
request in the prescribed manner, for such examination, within the prescribed
period and if No. request is made within the prescribed period the application
would be deemed to have been withdrawn.
19. Under section 12 of the
Act, when a request for examination is made in respect of an application for a
patent under sub-section (1) or sub-section (3) of section 11B, the application
and specification and other documents related thereto are to be referred at the
earliest, by the Controller, to an examiner for making a report to him,
inter-alia, as to whether the application and the specification and other
documents relating thereto are in accordance with the requirements of this Act
and of any rules made there under. The examiner to whom the application and the
specification and other documents relating thereto are referred under
sub-section (1) is to make the report to the Controller within such period as
may be prescribed.
20. Rule 24B of the Rules
that prescribes the respective periods referred to in Section 11B and 12, reads
as under:
Rule 24B. Examination of
application.--
(1)(i) A request for
examination under section 11B shall be made in Form 18 within forty-eight months
from the date of priority of the application or from the date of filing of the
application, whichever is earlier;
(ii) The period within
which the request for examination under sub-section (3) of section 11B to be
made shall be forty-eight months from the date of priority if applicable, or
forty-eight months from the date of filing of the application;
(iii) The request for
examination under sub-section (4) of section 11B shall be made within
forty-eight months from the date of priority or from the date of filing of the
application, or within six months from the date of revocation of the secrecy
direction, whichever is later;
(iv) The request for
examination of application as filed according to the 'Explanation' under
sub-section (3) of section 16 shall be made within forty-eight months from the
date of filing of the application or from the date of priority of the first
mentioned application or within six months from the date of filing of the
further application, whichever is later;
(v) The period for making
request for examination under section 11B, of the applications filed before the
1st day of January, 2005 shall be the period specified under the section 11B
before the commencement of the Patents (Amendment) Act, 2005 or the period
specified under these rules, whichever expires later.
(2)(i) The period within
which the Controller shall refer the application and specification and other
documents to the examiner in respect of the applications where the request for
examination has been received shall ordinarily be one month from the date its
publication or one month from the date of the request for examination whichever
is later:
Provided that such
reference shall be made in order in which the request is filed under sub-rule
(1).
(ii) The period within
which the examiner shall make the report under sub-section (2) of section 12,
shall ordinarily be one month but not exceeding three months from the date of
reference of the application to him by the Controller;
(iii) the period within
which the Controller shall dispose off the report of the examiner shall
ordinarily be one month from the date of the receipt of the such report by the
Controller.
(3) A first examination
report along with the application and specification shall be sent to the
applicant or his authorised agent ordinarily within six months from the date of
the request for examination or six months from date of publication whichever is
later. In case other interested person files the request, for examination, an
intimation of such examination may be sent to such interested person.
(4) The time for putting an
application in order for grant under section 21 shall be twelve months from the
date on which the first statement of objection is issued to the applicant to
comply with the requirements.
21. Under Rule 24B (1) of
the Rules, a request for examination under Section 11B of the Act is to be made
in Form 18 within forty-eight months from the date of the priority of the
application or from the date of filing of the application, whichever is
earlier. In the present case, the last date admittedly was 07.01.2010.
22. Rule 24B(2)(i) of the
Rules, inter-alia, prescribes that the Controller shall refer the application
and specification and other documents to the examiner, in respect of the
applications where the request for examination has been received, ordinarily
within one month from the date its publication or one month from the date of
the request for examination whichever is later.
23. Under Rule 24B(2)(ii),
the examiner is to make a report, under sub-section (2) of section 12, between
one month to three months, from the date of reference of the application to him
by the Controller.
24. Section 11A of the Act,
dealing with Publication of applications, stipulates that an application for
grant of patent shall ordinarily not be open to the public for such period as
may be prescribed. After the prescribed period, during which it is not open to
public, the application is to be published as soon as possible. Rule 24 of the
Rules prescribes the period, during which it would not be open to public, as 18
months from the date of filing of the application or the date of priority of
the application, whichever is earlier. After the expiry of the said period, the
Controller has to publish the application in the journal, within one month.
25. In the present case,
the Indian National Phase application, 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 date of 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 examiner 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 of 07.07.2007.
26. The request for
examination under section 11B was filed on 30.06.2008 so the same under Rule
24B would have had to be 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.
27. The Petitioner on 02.01.2010
filed a letter with the Respondents seeking correction under section 78 of the
Act. The request for correction was made prior to the expiry of the prescribed
period of 48 months, which was to expire on 07.01.2010.
28. Section 78 of the Act,
which deals with the power of the Controller to correct errors, reads as under:
"S. 78. Power of
Controller to correct clerical errors etc.--
(1) Without prejudice to
the provisions contained in sections 57 and 59 as regards amendment of
applications for patents or complete specifications or other documents related
thereto and subject to the provisions of section 44, the Controller may, in
accordance with the provisions of this section, correct any clerical error in
any patent or in any specification or other document filed in pursuance of such
application or in any application for a patent or any clerical error in any
matter which is entered in the register.
(2) A correction may be
made in pursuance of this section either upon a request in writing made by any
person interested and accompanied by the prescribed fee, or without such a
request.
(3) Where the Controller
proposes to make any such correction as aforesaid otherwise than in pursuance
of a request made under this section, he shall give notice of the proposal to
the patentee or the applicant for the patent, as the case may be, and to any
other person who appears to him to be concerned, and shall give them an
opportunity to be heard before making the correction.
(4) Where a request is made
under this section for the correction of any error in a patent or application
for a patent or any document filed in pursuance of such an application, and it
appears to the Controller that the correction would materially alter the
meaning or scope of the document to which the request relates and ought not to
be made without notice to persons affected thereby, he shall require notice of
the nature of the proposed correction to be published in the prescribed manner.
(5) Within the prescribed
time after any such publication as aforesaid any person interested may give
notice to the Controller of opposition to the request, and, where such notice
of opposition is given, the Controller shall give notice thereof to the person
by whom the request was made, and shall give to him and to the opponent an
opportunity to be heard before he decides the case."
29. Section 78 of the Act,
inter-alia, empowers the controller to correct any clerical error in any patent
or in any specification or other document filed in pursuance of such
application or in any application for a patent or any clerical error in any
matter which is entered in the register. The correction can be made either upon
a request in writing made by any person interested and accompanied by the
prescribed fee, or without such a request.
30. The rules prescribe
various forms for different actions under the Act and the Rules. The First
Schedule read with Rule 7 rules provides for the forms and the fee to be paid
for various actions under the Act and the Rules. With regard to an application
under section 78 for corrections, the First Schedule stipulates as under:
31. It may be noted that
there is No. form prescribed for making a request for correction of clerical error
under Section 78 of the Act. The fee prescribed is Rs. 500/- for natural
persons and Rs. 2,000/- for other than natural persons.
32. The petitioner, on
02.01.2010, had given a letter requesting for correction, under Section 78 of
the Act, of the clerical error in the Form 18, wherein the petitioner had
mentioned the number of the Indian National Phase application as
6272/DELNP/2008 instead of 5272/DELNP/2008. It may be noted that, in the
originally filed request for examination, the date of the application for grant
of patent was correctly mentioned as 18th June 2008 and the description of the
patent was correctly mentioned as "IRIS IDENTIFICATION SYSTEM AND METHOD
USING MOBILE DEVICE WITH STEREO CAMERA". Along with the request for
correction, the petitioner also paid the requisite fee of Rs. 2,000/-.
33. Since there is No. form
prescribed by the Act or the Rules for seeking correction under Section 78 of
the Act, even a letter would be sufficient. The petitioner along with the
letter had enclosed the corrected Form 18 and the corrected covering letter.
The request was made prior to the expiry of the period of 48 months. The
requisite fee was also paid thereon. There is No. reason as to why the
Respondents should not have considered the same.
34. The reason given in the
counter affidavit, that the Power of the Controller to correct clerical errors
can only be exercised or made to effect, when the patent application is in
examination procedure and on the date of filing of the request under Section 78
i.e. on 02.01.2010, there was No. office action possible on the petitioner's
patent application, is not tenable, in view of what has been noticed
hereinabove with reference to Sections 11B, 12 of the Act and Rules 24B of the
Rules.
35. If the Respondents had
struck to the timelines for examination, the patent application would have been
in the examination procedure. Further, a request under Section 78 is not
dependent on the examination procedure or any office action on the patent
application. If the request of the petitioner for correction under Section 78
had been considered by the respondents, there is No. reason as to why the same
was not liable to be granted.
36. The request for
correction under Section 78 of the Act was made before the expiry of the
48-month period, was accompanied with the requisite fee and sought correction
of what was clearly a clerical error. Thus the action of the Respondents, in
not considering the request for correction, cannot be sustained.
37. The contention, that
the request for correction made by the petitioner by letter dated 02.01.2010
(sic 02.01.2009) was not the proper procedure to make corrections under the
Act, is also not tenable in view of what has been noticed hereinabove with
reference to Section 78 of the Act. Further contention that the request for
correction made on 13.02.2012 was beyond the statutory time period and by that
time the patent application was already deemed to have been withdrawn under
Section 11B(4) is of No. consequence as by letter dated 13.02.2012, the petitioner
had only reiterated the earlier request dated 02.01.2010. The letter of
13.02.2012 was not even accompanied with any fee, which fee had already been
paid along with the request dated 02.01.2010.
38. Further contention 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, is also
not substantiated from the record.
39. Form 18 which is
prescribed by the rules is as under:
40. Perusal of Form 18
shows that where a request is made by the applicant, then the statement is to
be filled in terms of Para 2 and if the request is made by any other interested
person then the statement is to be filled in terms of Para 3.
41. The Petitioner had
filled up Form 18 and had given the statement as prescribed by Para 2. When the
petitioner had specifically stated, in Form 18, that the request for
examination is being made by the Applicant and gave a statement in terms of
Para 2 thereof, so how can the respondents contend, that as any interested
person other than the applicant can also make a request on Form 18, there was
No. reason to doubt that there was any mistake or mismatch in the Form-18
submitted by the petitioner. This contention is further controverted by the
email dated 30.01.2012 written by the Assistant Controller of Patents to the
Advocates of the Petitioner as under:
"This has come to my
notice that there is some discrepancy in documents filed in respect of patent
application 5272/delnp/2008. I find it necessary to bring the same in your
knowledge. Correspondence dt. 27.06.2008; dt. 18.07.2008. Request in F-18 dt.
30.06.2008, Form-5 which seems to related your patent application
5272/delnp/2008 has been filed mentioning patent application No.
6272/delnp/2008, This application No. 6272/delnp/2008 does not belong to your
firm.
As such your
client/applicant may have to face difficulty in meetings the timelines for
filing of F-18.
This is for your
information as to take necessary remedy at your end."
42. The email dated
30.01.2012 clearly shows that the error in Form 18 was an apparent clerical
error and was writ large.
43. Further, the reliance
placed by counsel for the Respondent on the decision of a coordinate bench of
this court in NIPPON STEEL CORPORATION (supra), to contend that the Controller
of patents is not competent to allow the application for amendment after the
patent application is deemed to have been withdrawn, is misplaced. In NIPPON
STEEL CORPORATION, the petitioner failed to file a request for examination
under section 11B within forty-eight months from the date of priority of the
application. Thereafter the Petitioner, therein, filed an application seeking
to amend the date of priority. It was held that the amendment could not be
granted as the application for amendment was filed after the original priority
date had already expired and the application for grant of patent had already been
deemed to have been withdrawn.
44. The said judgment is
not applicable in the facts of the present case. In this case, 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.
45. In view of the above,
the action of the Respondents in deeming the Indian National Phase application
No. 5272/DELNP/2008 as deemed to be withdrawn, is set aside. The "Deemed
to be withdrawn" status of the application is accordingly quashed. The
application is restored and shall be treated to be pending. The clerical error
in the Request for Examination and its supporting documents, submitted by the
petitioner, shall be corrected and the Indian National Phase application number
referred therein shall be read as 5272/DELNP/2008. 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 Respondents shall proceed
further with the application in accordance with law. There shall be No. orders
as to costs.
