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Judgment
K.N. Basha, J
1 . This appeal is preferred by the appellant challenging the order dated 02.07/2013 passed by the Assistant Controller of Patents and Designs, New Delhi rejecting the petition filed by the appellant under Rule 138 seeking for the relief of Condonation of Delay and Extension of Time for filing the National Phase Application beyond the prescribed period of 31 months.
2 . The factual matrix of the case is that the appellant submitted their International Application at Patent Office Delhi on 10.02.2012. Though it is mentioned in the impugned order as 13.02.2012 based on International Patent Application under No. PCT/US2010/040962 dated 02.07.2009 claiming the priority date on US Patent Application No. 61/222744 dated 02.07.2009 and 61/243433 dated 17.09.2009.
The appellant submitted that as per Section 7 of the Patents Act, 1970 (hereinafter referred to as the Act) read with Rule 20 of the Patents Rules, 2003 (hereinafter refer to as the Rules) and Rule 82 bis of PCT regulation requires the appellant to file the National Phase Application within 31 months from the priority date of the International Application. It is case of the appellant that the prescribed period of 31 months expires on 02.02.2012 if it is calculated from the International Application date i.e. 2. 07.2010 and as a result there is a delay of 8 days. It is further submitted that as per provision under Rule 138 the controller is vested with power to extend the time prescribed for a period of one month.
It is stated that the reason for the delay of 8 days was an account of bonafide error committed by the office of the Indian Patent Agent of the appellant in docketing the filing of the international application in India. The instruction to file the National Phase Application was received by the Indian Patent Agent on 28.01.2012 as per the email from International Patent Specialist Mr. Curtis Yeh. The said email was duly acknowledged by the Indian Patent Agent Ms. Manisha Singh on the very same date, the appellant produced the copies of the email under Annexure P4. On receipt of the email of 28.01.2012, the internal dead line and external dead line entered on 31. 01.2012 and 02.02.2012 respectively. Due to system failure on 28.01.2012, the entry was deleted and the software did not shown any filing of reminder either on 31. 01.2012 or on 02.02.2012. The Attorney-in-Charge received an email from Assistant to US Attorney on 10.02.2012. Subsequent enquiry revealed about the system failure which happened on 28.01.2012 as it was a Saturday and the office of the Indian Patent Agent works only for half day. The deletion of the entry made on the said date was not noticed. Soon after knowing the system fault in the docketing immediate steps taken on 10.02.2012 itself by filing the petition under Rule 138 of the Patent Rules, 2003 seeking for Condonation of Delay of 8 days in filing the National Phase Application. It is stated by the appellant that the delay is only due to the above said factors and it is not deliberate.
5 . Mr. Hemant Singh, the learned counsel for the appellant would contend that the Assistant Controller of Patents and Designs, New Delhi has committed serious error of law by ignoring and overlooking the specific provision under Rule 138 vesting power on him to condone the delay and extend the time for submitting the National Phase Application. It is contended that the impugned order was passed on the ground that the National Phase Application cannot be taken on record as the same has become withdrawn under Rule 22 for non-compliance of Rule 20 by wrong interpretation and application of the provisions of Rule 138 and Rules 20 & 22. The learned counsel would contend that the Controller has misread the provisions of law prescribed under Act and Rules.
It is further contended that the Controller has also overlooked the provision under Rule 23 and Article 48 of PCT and Rule 82 bis of the Regulation under PCT. It is contented that the provision under Article 48 and Rule 82 bis of PCT and its regulation provided sufficient safeguard to an applicant in case of delay in filing of an application. The learned counsel would also place reliance on a decision of the Hon'ble Madras High Court reported in 2011 (46) PTC 70 (Mad) - Sharma v. Deputy Controller of Patents & Designs, wherein the Hon'ble Madras High Court has held in similar matter that the object of Rule 138 is that the prescribed time under Rule 20 can be extended by a period of one month on showing sufficient cause. But the Assistant Controller has simply misread and overlooked the decision of the Hon'ble Madras High Court and placed reliance on the decision of the Hon'ble Delhi High Court which is not relevant or applicable to the issue involved in the instant case. It is pointed out by the learned counsel for the appellant that the Hon'ble Delhi High Court decision on the basis of the request made by the applicant for amendment of application for change in date of priority. It is also pointed out that in the Hon'ble Delhi High Court decision the scope of Rule 138 was not discussed or raised and the said decision proceeded on the basis of deemed withdrawal of the application itself under Section 11(b) of the Act.
The learned counsel would lastly contend that the Controller has not assigned any valid reasons for over looking the decision of the Hon'ble Madras High Court 2011 (46) PTC 70 (Mad) - Sharma v. Deputy Controller of Patents & Designs and in the impugned order it is merely stated that the Patent Office at Delhi comes under the jurisdiction of Hon'ble Delhi High Court and as such the directions laid down by the Hon'ble Delhi High Court need to be upright without realizing the issue involved in the decision of the Hon'ble Delhi High Court is entirely different one than that of the instant case. The learned counsel would vehemently submit that the impugned order deprived the valuable right of the appellant resulting in grave miscarriage of justice and as such the same is liable to be set aside.
We have given our careful and anxious consideration to the contention put forward by the learned counsel for the appellant and also scanned through the entire materials available on record and perused the impugned order passed by the Assistant Controller of Patents and Designs, New Delhi.
The crux of the question involved in the instant case is that whether the appellant is entitled to seek the relief of condonation of delay and extension of time for filing the National Phase Application for the patent as per Rule 138.
The fact remains that the International Application was submitted to the Patent Office on 10.02.2012 for filing as a National Phase Application and the appellant claimed the priority date as 02.07.2009. The 31 months period expired from the above said dates on 02.02.2012 resulting a delay of 8 days in preferring the application. Before proceeding to consider the question involved in this matter, it is relevant to referring the following rules.
The Rules 20, 22 and 138
International applications designating or designating and electing India-
(1) An application corresponding to an international application under the Patent Co-operation Treaty under Section 7(1A) may be made in Form 1-A.
(2) The Patent Office shall not commence processing of an application filed corresponding to international application designating India before the expiration of the time limit prescribed under Sub-rule (4).
(3) An applicant in respect of an international application designating India shall, before the time limit prescribed in Sub-rule (4),
(a) pay the prescribed national fee and other fees to the patent office in the manner prescribed under these rules and under the regulations made under the Treaty;
(b) and where the international application was either not filed or has not been published in English, file with the patent office, a transaction of the application in English, duly verified by the applicant or the person duly authorised by him that the contents thereof are correct and complete.
Sub-Rule 4 (i) The time limit referred to in Sub-rule (2) shall be thirty one months from the priority date as referred to in Article 2(xi);
(ii) Notwithstanding anything contained in Clause (i), the patent office may, on the express request filed in Form 18 along with the fee specified in First Schedule, process or examine the application at any time before thirty one months.
(5) The translation of the international application referred to in Sub-rule (3) shall include a translation in English of,
(i) the description;
(ii) the claims as filed;
(iii) any text matter of the drawings;
(iv) the abstract; and
(v) in case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article;
(vi) in case the applicant has elected India and any amendments to the description, the claims and text matter of the drawings that are annexed to the international preliminary examination report.
(6) If the applicant fails to file a translation of the amended claims and annexures referred to in Sub-rule (5), even after invitation from the appropriate office to do so, within a time limit as may be fixed by that office having regard to the time left for meeting the requirements, the amended claims and annexures shall be disregarded in the course of further processing the application by the appropriate office.
(7) The applicant in respect of an international application designating India shall when complying with sub rule (3), preferably use Forms set out in the Second Schedule before the appropriate office as designated office.
Effect of non-compliance with certain requirements:
An international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of Rule 20.
Power to extend time prescribed:
(1) Save as otherwise provided in the Rules 24, 55 and 80(1A), the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time made under these rules shall be made before expiry of prescribed period."
11 . Reading the above said provisions would make it abundantly clear that the Controller undoubtedly vested with the power to extend the time after condoning the delay after expiry of prescribed period of 31 months for submitting the National Phase Application. It is pertinent to note that in the impugned order, the Controller placed reliance on the provision under Rule 20 and 22 holding that the prescribed time limit of 31 months as already been expired and as a result as per Rule 22 the International Application shall be deemed to be withdrawn that the non consequence under Rule 20. At this stage, we are constrained to state that the Controller not at all assigned any reason for over looking the provision under Rule 138 which provides for the Extension of a period of one month after expiry of the period of 31 months.
In our considered view, the prescribed period includes the extended period of one month in the event of the petitioner/appellant showing the sufficient cause to condone the delay of 8 days. It is also relevant to state at this stage as per Rule 138(2) any request for extension of time made under the Rules shall be made before the expiry of prescribed period. In respect of this position, the Madras High Court in the decision reported in 2011 (46) PTC 70 (Mad) held hereunder.
"30. At the same time, under Rule 138, period for submitting the application can be extended by one month, if a good cause is shown by the applicant.
The Controller is vested with power to extend the time by one month by exercising the powers under the rules. Rule 138 of the Patents Rule is independent of Rule 6(5) or Article 48 and Rule 82 of PCT.
3 2 . The learned Deputy Controller was also not right in coming to the conclusion that in view of proviso to Rule 138, the application for extension of time could only be moved within the period stipulated under Rule 20 i.e. 31 months, as reading of Rule 138 would show that the rule making authority has used two terms 1) prescribed time under the rules 2) period for which time could be extended.
The time prescribed under Rule 20 is 31 months, and the period, which could be extended by taking into consideration of facts and circumstances, is one month.
The application for extension is required to be made within the period prescribed. Therefore, proviso would come into operation for the purpose of calculating period of one month. On true interpretation of Rule 138, it is held that application for extension is to be filed within one month after expiry of prescribed time under Rule 20. In case, an application is moved for extension of time by one month or shorter period, it is required to be decided on merit by taking into consideration facts and circumstances of each case.
It is a well settled law that the Courts and statutory authorities are to do substantial justice. The object of Rule 138 is that prescribed time under Rule 20 can be extended by period of one month on showing of sufficient cause. As already observed above, it is the discretion of the Controller to extend the period on facts and circumstances of the case, but it was not correct on the part of the Deputy Controller to have rejected the application, by treating it to be not maintainable, as having been filed after expiry of prescribed time under Rule 20 of the Patents Rules 2003. The merits of the facts disclosed were to be considered. Rule 6(5) or Article 48 and Rule 82 of PCT rule do not govern powers under Rule 138, as the Controller under this rule is to exercise quasi judicial power."
We have to go by the harmonious interpretation of Rule 20 prescribing a period of 31 months and Rule 138 prescribing a period of one month for extension and ultimately to arrive at conclusion on the basis of the sufficient cause shown by the appellant for condoning the delay of extending the time. The decision of the Hon'ble Madras High Court is direct to the issue involved in the instant case and as such the same is applicable to the present case.
As far as the decision of Hon'ble Delhi High Court is concerned, it is to be stated that the issue involved in the said decision is whether the amendment to the application could be permitted which is deemed to have been withdrawn. It is seen that there is a failure to make request for examination of application for patent within a period of 48 months from the date of priority of the application. It is pertinent to note that in respect of the said issue there is absolutely no provision either under the Act or under the Rule for enabling the applicant to resort to amendment after the expiry of the prescribed period of 48 months. The learned Judge of the Hon'ble Delhi High Court in the decision reported in 2011 (46 PTC 122 (Del.) - Nippon Steel Corporation v. Union of India has held hereunder.
"22. This Court is unable to agree with the above submission of Mr. Chandra. Rule 137 only applies to the amendment of a document for which there is no special provision in the Act. Section 57(5) of the Act does provide for amending the priority date. However, the Petitioner's request for amending the priority date is with a view to indirectly get the time for filing the RFE extended. In the considered view of this Court, the power under Rule 137 cannot be invoked by the Office of the CoP in the circumstances of the present case to permit an amendment to a patent application that has already been 'withdrawn' by operation of Section 11-B(4) of the Act.
Merely because there is no time limit prescribed for filing an application for amendment of the priority date, it does not mean that such application can be filed even after a patent application ceases to exist in law. Once an application is deemed to have been withdrawn by an applicant in terms of Section 11-B(4) of the Act, the CoP cannot entertain an application for amending any portion of such application. It is not possible to accept the submission of the learned Senior counsel for the Petitioner that the CoP is bound to allow an amendment at any time, even after the deemed withdrawal of such application, and that once such amendment is allowed it would relate back to the date of the filing of the application and thereby revive the application. This submission is contrary to the scheme of the Act and Rules. Also, in view of what has been stated by the D CoP in the email of 2nd February 2011 there is a doubt whether an applicant can seek to amend the priority date at its sweet will to any date of its choice. However, for the purposes of the present case, it is beyond doubt that the CoP could not have, after the deemed withdrawal of the Petitioner's patent application on 9th February 2010, permitted it to amend the priority date of such application."
Therefore, the issue involved in the Hon'ble Delhi High Court decision is entirely different from that issue involved in the instant case.
The learned counsel for the appellant would also fairly submit that the provision under Rule 138 underwent an amendment subsequent to the relevant period in the instant case which came into force from 15/10/2013 where Chapter III and as a result there is no provision as on date to seek the relief of condonation of delay or extension of time beyond the extended period of 31 months as per Chapter III of the Rules. This amendment makes it clear that the legislature may intend to change for fixing the prescribing time ones for all without providing any extension of time. But as far as the instant case is concerned, there is a specific provision under rules as per Rule 138 and as such there is no justifications for the Controller to overlook or brush aside the said provision and to reject the relief sought for by the appellant for extension of time. In view of the aforesaid reasons, we are constrained to set-aside the impugned order dated 02.07/2013.
Consequently, this matter is remanded for consideration of the office of Controller in a manner known to law by providing all opportunities as per the entitlement of the appellant/applicant for seeking the relief of examination of the patent sought for by the appellant/applicant etc. It is made clear that the time consumed for disposal of the application for condonation of delay and extension of time and as well as the time consumed for filing of the present appeal and disposal of the same is to be excluded enabling the appellant to take steps as contemplated under provision of the Act and Rules for the examination of the claimed patent etc. It is further made clear that the application of the appellant should be disposed of as expeditiously as possible.