Intellectual property may be a class of property underneath the law that has the intangible creation of human intellect, one amongst them is Patent. According to the Patent Act “Patent is a legal document granted by the government giving an inventor exclusive rights to make use and sell an invention for a specified number of years i.e 20 years. Patents are also available for significant improvement in previously invented items.

Introduction to Publication of Patent Application in India

Publication of Patent Application in India is one of the prime stages in the process to get the patent. Once the application for filing of the patent is made according to the Indian Patent Act 1970, Application shall be published for public inspection for 18 months from the date of filing or priority date of the patent. The act made it mandatory for every patentee to publish the patent application for the inspection of the general public in the official gazette of the country.¹

The publication of the patent application in official gazette shall provide the following details of the application 

• Application number of the patent
• Name and Address of the applicant
• Title of the invention
• Priority details
• Abstract of the patent for which application is filed

Section 11A of the Patent Act 1970 describes the Publication of the Patent Application

According to which 

• No application of a patent will be open for the public for a specified period until unless provided otherwise.
• The applicant in a specified manner requests the Controller to publish his application at any time before the expiry of the 18 months.
• The controller will publish the application for a patent on the expiry of the specified period except when any secrecy directions are imposed in the application, the application has been abandoned because of not providing a complete specification of the patent within twelve months of its filing or application has been withdrawn three months before the period specified.
• When secrecy directions have been given by the controller for patent application than patent will be published after the expiry of the specified period.
• Every application of publication will include the date and number of application, name, and address of the applicant and an abstract of the application.

After the publication of a patent application under section 11A

• The patent office will make specifications and drawings of the application available to the public after paying the prescribed fees.
• On and from the publication of the patent application and until the date of grant of a patent, the application will have the like privileges and rights as if a patent for the invention has been granted on the date of publication of the application provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted.

Request for examination

According to the Patent Act 1970,

• No application for patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within a prescribed period to the controller.
• In case of an application in respect of a claim for patent filed before 1 January 2005, an application will be made in the prescribed manner within the prescribed time for an examination by the applicant or by the interested person.
• If the application for examination was not made in a specified period by an interested applicant, the application will be treated as withdrawn by the applicant.
• Provided that the applicant after applying or before the grant of the patent requests application withdrawal in a prescribed manner. 

In the case where secrecy direction has been issued, the request for examination may be made within the prescribed period from the date of revocation of secrecy direction.

Examination of Application

According to the Patent Act 1970, Section 12 states that the controller will refer to the examiner at the earliest on receiving the request for examination in respect of an application for patent in a specified manner with related documents in respect of the following matters.

• Do the application and specification and other documents related to it are following the requirements of this act?
• Whether  there is any lawful ground of objection to the grant of the patent under this act in pursuance of the application
• Result of the investigation is made under section 13 and any other matter which may be prescribed.

The examiner to whom the application, specification and other documents related thereto are referred shall make a report to the controller in the specified period.

Case Study

Sphaera Pharma Pvt. Ltd and Anr. Vs Union of India

In this case, Delhi High Court decided upon the issue of the limitation period for the examination of a patent application prescribed under the Patent Act 1970. The court once again decided on the validity of the extension of the prescribed period in filing a request for examination of a patent application.

In the case, Sphaera Pharma (petitioner) filed a patent application with the Indian Patent Office. As per the Act, the petitioner was also required to file a request for the examination – Form 18 of the patent application within 48 months from the date of filing the initial patent application. The petitioner had also filed Form 30 concerning the Patent Application so that the request for examination could be taken on record. However, the said request was not uploaded due to some technical reasons and as a result, the patent application was shown as abandoned under Section 11B of the Act. Thereafter, the petitioner filed a review petition for its application that wasn’t thought of by the bureau. The petitioner filed an official document petition before the Hon’ble city judicature for the restoration of the application. The petitioner contended that the Controller of Patents had the facility to increase the prescribed amount for filing a patent examination request, for one month. After critically examining sec 11B in conjunction with Rule 24B, the court command that there’s no scope for the thought of any application for the examination that is filed once the prescribed time from the date of filing of the application. The court rejected the petitioner’s rivalry concerning the facility of the Controller of Patent Act. Court command that plain reading of the act clearly shows that the facility of the Patent Controller to increase the prescribed amount doesn’t extend the prescribed amount underneath rule 24B. The Court took the respect to the judgment within the case of Nippon Steel Corporation v. Union of India[2011 (46) PTC 122 (Del)], wherein there was an error in entering the priority date of the patent. The relevant excerpt of the judgment states that,

“There is a logic to the time limits set out under the Act. The scheme of the Act and the Rules require time-bound steps to be taken by applicants for grant of the patent at various stages. The provisions of the Act and the Rules have to expressly reflect the legislative intent to permit relaxation of time limits, absent which such relaxation cannot be read into’ the provisions by a High Court exercising powers under Article 226 of the Constitution. In other words, this Court can’t accept the submission of the learned Senior counsel for the Petitioner that the time-limits under Section 11-B(1) of the Act read with Rule 24-B of the Rules, notwithstanding Section 11-B(4) of the Act, is merely directory and not mandatory. The wording of Section 11-B(4) of the Act underscores the mandatory nature of the time limit for filing an RFE in terms of Section 11-B(1) of the Act read with Rule 24-B of the Rules.”²

The Court discussed the Nippon case and clarified that the time limit prescribed under the act for filing patent examination is mandatory and can’t be relaxed in any nature.

The gist of this case is that the timelines stated in the Patent Act play an important role in the complete course of the patent. And if the applicant fails to file a request for examination or fails to respond in a prescribed period, due to any reason there is no recourse available to revive the case.

In this case, the High Court reaffirmed that the issue regarding the specified period for filing a request for examination of the patent application. The court states that the time limit of 48 months is mandatory and must be adhered to regardless of the delay caused due to any reason whatsoever. The time limits are there for a purpose and must be strictly followed by the applicant. However, if any problem arises because of the technical reason there must be some alternate method for the applicant for filing the request for examination of a patent application after the completion of the time specified in the act.

Endnotes

1.  http://ipindia.nic.in/writereaddata/Portal/ev/sections-index.html

2.  http://www.mondaq.com/india/x/774178/Patent/Request+for+Examination+is+Uncondonable