AI Structured Summary
Not yet generated for this judgment
Judgment
Sr.No,Date,Events,,,,,
1.,24 March 2008,,"Nycomed GmbH filed a patent application bearing
IN patent application number 614/MUM/2008 (hereinafte
referred to as “Priority Applicationâ€)",r,,,
,,,,,,,
2.,31 July 2008,"Nycomed GmbH assigned the Priority Application to 4SC AG
the Appellant",,,,,
3.,23 March 2009,"The Appellant filed a PCT application claiming priority from the
Priority Application and bearing no. PCT/EP2009/053399",,,,,
4.,21 September 2010,"The Appellant filed a National Phase application, being
1987/MUMNP/2010 (hereinafter referred t o as “the
Applicationâ€) in respect of the above PCT application",,,,,
5.,31 March 2011,"The Appellant’s erstwhile patent attorney filed a request for
examination of the Priority Application",,,,,
6.,2 March 2012,"The Appellant’s erstwhile patent attorney filed a request for
examination of the Application.",,,,,
7.,about June 2012,The Priority Application and the Application were,,,,,
,,transferred to the present patent attorney,,,,,
8.,19 April 2013,The present patent attorney received a First,,,,,
,,Examination Report (hereinafter referred to as,,,,,
,,“FER 1â€) in respect of the Priority Application,,,,,
9.,03 September 2013,"The present patent attorney wrote a letter explaining the
inadvertent error in filing of the requests for examination in
respect of both the applications and requested the Respondent to
treat the           Priority Applicatioans
withdrawn/abandoned and to proceed only with the Application.
The Appellant/ its present patent attorney also filed a petition
under Rule 137 in relation to the Priority Application for
condonation/regularization of the procedural irregularity.",,,,,
10.,05 March 2015,"First Examination Report (hereinafter referred to as “FER
2â€) in respect of the Application was received.",,,,,
11.,02 March 2016,"A response to the FER 2 was filed well within the prescribed time
limit",,,,,
12.,20 October 2016,"Hearing         Â
notice         Â
issued
Application          Â
scheduling November 2016.","Âin
Âth e","respect
hearing","of
for","the
03",
13.,03 November 2016,"Date of Hearing in respect of the Application. The Learned
Examiner raised a completely new
objection viz: “The present application cannot be",,,,,
4.2 It is clear that the agent in his post hearing written submissions at para no.6 (1) & (2) wherein it is mentioned that the patent application,,,,,,,
no.614/MUM/2008 for the invention was first filed with the Patent office on 24/03/2008 by Nycomed GmbH, Germany, in compliance with Section",,,,,,,
39(1) as some of the inventors in respect the invention were person residing in India. At para (2) it is stated that 614/Mum/2008, wherein a form 6",,,,,,,
was filed with the patent office on 5/12/2008 recording 4SCAG, Germany, as assignee of Nycomed GmbH and subsequent proprietors of application",,,,,,,
no.614/MUM/2008.,,,,,,,
4.3 On filing application no.1987/MUMNP/2010, the applicants had not withdrawn priority application No.614/MUM/2008 as the priority application",,,,,,,
was filed to create a priority date for the invention and as both the applications claimed the same invention, in both the application agent had filed the",,,,,,,
request for examination and both application have been processed accordingly.,,,,,,,
4.4 Section 135(3) provides that in the case of an application filed under the PCT designating India and claiming priority from a previously filed,,,,,,,
application in India, Examination request should be filed only for one of the application filed in India.",,,,,,,
4.5 On realization of the above fact the agent had filed a petition under Rule 137 with a prescribed fee on 03/09/2013 for condonation and,,,,,,,
regularization of the 17 procedural irregularity, the Petition was carefully examined but it is not allowed since filing a double Request for examination",,,,,,,
of one invention such as to Priority application and its corresponding national phase application is a violation of Section 135(3).,,,,,,,
4.6 In view of above the subject patent application bearing no.1987/MUMNP/2010 is invalid patent application.,,,,,,,
4.7 Upon consideration of all the documents available on record and in view of above agents submission thereof, and under the circumstances of the",,,,,,,
case, I hereby refuse to proceed further on this Patent application No. 1987/MUMNP/2010.",,,,,,,
Now the relevant statutory provisions are referred to as below:,,,,,,,
Section 135 Available at http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps135.html Convention applications,,,,,,,
“………,,,,,,,
(3) In case of an application filed under the Patent Cooperation Treaty designating India and claiming priority from a previously filed application in,,,,,,,
India, the provisions of sub-sections (1) and (2) shall apply as if the previously filed application were the basic application:",,,,,,,
Provided that a request for examination under section 11B shall be made only for one of the applications filed in India.†[Emphasis Added],,,,,,,
Rule 137 Available at http://ipindia.nic.in/writereaddata/Portal/ev/rules/pr137.html Powers of Controller generally Any document for the amendment of,,,,,,,
which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be,,,,,,,
obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.",,,,,,,
The spirit of the law is to avoid double patenting. It ensures that no two patents can be grated for the same invention and objects filing request for,,,,,,,
examination in both the applications. However, if by inadvertence or by oversight any irregularity occurs, it is not the intention of legislation to initiate",,,,,,,
punitive actions or deny even a single patent if found patentable otherwise.,,,,,,,
We have reviewed the prosecution history of patent application no.,,,,,,,
614/MUM/2008 the priority application herein. We have seen that no sooner the appellant discovered the irregularity; they have not only informed the,,,,,,,
Controller through their letter dated 03/09/2013 but also filed a petition under Rule 137 of the Patents Rules, 2003. They have mentioned that",,,,,,,
inadvertently they filed the Request for examination in 614/MUM/2008 and intended to proceed with examination of only 1987/MUMNP/2010. They,,,,,,,
requested Controller to condone such irregularity. The excerpts of the letter dated 03/09/2013 filed in patent application no. 614/MUM/2008 is quoted,,,,,,,
herein below:,,,,,,,
The respondent in para 9 of his order quotes On realization of the above fact the agent had filed a petition under Rule 137 with a prescribed fee on,,,,,,,
03/09/2013 for condonation and regularization of the 17 procedural irregularity, the Petition was carefully examined but it is not allowed since filing a",,,,,,,
double Request for examination of one invention such as to Priority application and its corresponding national phase application is a violation of Section,,,,,,,
135(3). [Emphasis added],,,,,,,
It is a fact that no petition was filed in the instant application no. 1987/MUMNP/2010. This means that the respondent went on to disallow the,,,,,,,
petition u/r 137 filed on 03/09/2013, in respect of previous priority application i.e. 614/MUM/2008, while deciding the present case no.",,,,,,,
1987/MUMNP/2010.,,,,,,,
It is noted that the present Controller was also the Controller for patent application no. 614/MUM/2008. When the letter informing the irregularity,,,,,,,
was received and the petition u/r 137 was filed to that effect, what action did he take? He could have taken appropriate action in accordance with the",,,,,,,
law, while adjudicating that application no. 614/MUM/2008; but certainly not while adjudicating some other patent application.",,,,,,,
Here again, we appreciate that it couldn’t have been possible for the respondent to inform the appellant about this fact of double Request for",,,,,,,
examination, while issuance of FER in case of 1987/MUMNP/2010, and also while issuing hearing notice. Even he could inform them only on the date",,,,,,,
of hearing and adjourned the hearing for a later date; same analogy holds good in case of the appellant also that no sooner they came to know about,,,,,,,
the double request for examination, they informed the Controller and took remedial action. Hence, the intention of the applicant/appellant cannot be",,,,,,,
doubted.,,,,,,,
The learned Controller also makes a statement in his order that Consequent upon filing the request for Examination the Application,,,,,,,
614/MUM/2008 was examined and generated a First Examination report on 19/04/2013, thereupon, the agent failed to response to FER and",,,,,,,
consequently, the priority application was deemed to have been abandoned u/s 21(1) of the Patents Act, 1970,[Emphasis added]. It is worth noting that",,,,,,,
the last date for putting the application in order of grant in 614/MUM/2008 was 21/04/2014, as per the First Examination Report issued by none other",,,,,,,
than the present Controller on 19/04/2013. The learned counsel of the appellant has informed them about their intention as early as 03/09/2013 that,,,,,,,
they filed the request for examination in that case inadvertently and wish to proceed with only PCT National phase application only. Therefore, the",,,,,,,
statement of the leaned Controller is factually incorrect.,,,,,,,
It is also surprising that how the Controller has held that patent application no. 1987/MUMNP/2010 is invalid patent application. We find this,,,,,,,
statement as not supported by the patent law.,,,,,,,
We have analyzed the whole case and are of the view that the irregularity caused inadvertently deserves to be condoned. Here the case of double,,,,,,,
patenting is not occurring as the initial application has been abandoned already under section 21(1) of the Patents Act, 1970. Hence we set aside the",,,,,,,
order of the Respondent. We note that the respondent has not considered the application on merit.,,,,,,,
While arguing the matter in front of us, the learned counsel has requested about the change of Controller, in case the Board choose to remand",,,,,,,
back the case.,,,,,,,
We are inclined to agree with their submission and direct the respondents to refer the instant application to some other Controller, who shall decide",,,,,,,
the matter on merit in accordance with law, within 3 months from the issuance of this order, giving a fair opportunity to the appellant of being heard.",,,,,,,
Keeping in view the above facts and circumstances, the instant appeal is allowed. No cost.",,,,,,,