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Discretionary powers of Controller - Rules 137 and 138

By Ranjan Matthew    

The year 2011 witnessed two important High Court judgments - Nokia Corporation v Deputy Controller of Patents and Designs [W.P. No.2057 of 2010 and M.P.No.1 of 2010 - High Court of Madras] (Nokia case) and Nippon Steel Corporation v Union of India [W.P. (C) 801 of 2011 - High Court of Delhi] (Nippon Steel case) regarding, inter alia, procedural timelines that need to be adhered to during patent prosecution and the discretionary powers of the Controller under the Patents Act, 1970 (“the Act”) to extend the time-lines and condone delays in appropriate cases. It is important to discuss the principles laid down in both these decisions and the apparently contrasting manner in which both decisions have approached the issue before them.     

Whereas the Nokia case dealt with the powers of the Controller to allow a national phase application to be filed beyond the 31 month deadline, the Nippon Steel case dealt with the powers of the Controller to allow an amendment of priority after the applicant had failed to file a request for examination within the 48-month deadline.    

In the Nokia case, the High Court of Madras held that if the Controller thinks fit, i.e., upon the applicant showing sufficient cause for the delay, applicants wishing to file a national phase application in India could do so within 32 months from the earliest priority date. Therefore, a national phase application along with petition under Rule 138 of the Patent Rules, 2003 can be made within one month after 31 months has elapsed from the earliest priority of the international application. The Court specifically noted that the ‘prescribed period’ under Rule 138(2) included the one month extension period and hence, so long as an appropriate application under Rule 138 is moved within one month from the 31 month deadline, the Controller had to exercise his discretion in deciding whether to extend the time-line or simply dismiss the application. In the course of its judgment, the High Court of Madras noted that the courts and the Controller ought to act in a manner so as to do substantial justice.    

On the other hand, in the Nippon Steel case, the High Court of Delhi held that once the 48-month time-period for filing a request for examination (RFE) has elapsed, the patent application was deemed to have been withdrawn under Section 11B (4) of the Patents Act. Hence, logically, there was no patent application in the eyes of the law and consequently, a request for amending the priority date under Section 57(5) could not be accepted after the 48 month time period to file the RFE had elapsed. Interestingly, the Court held that time-lines prescribed in the statute and/or the rules are not merely ‘directory’ in nature but rather, are mandatory, which need to be strictly complied with.  

Recent decisions of the IPO, New Delhi     

In two of the decisions [see end notes 1 & 2] rendered on 1st August 2011, the Delhi IPO had the occasion to deal with facts similar to ones in the aforesaid cases. In both the cases, the national phase entry date was missed and was attributed to docketing error and non-receipt of e-mail. Petitions, inter alia, under Rules 137 and 138 were filed in both cases, with a request to condone the delay, obviate irregularity in procedure and extend procedural formality deadlines (national phase entry and RFE filing), which were rejected by the Patent Office.  

Regarding the petitions under Rules 137 and 138, the Deputy Controller disregarded the Nokia case and instead chose to rely on the Nippon Steel case. The Deputy Controller was of the view that since the Nippon Steel case was more recent and the Delhi IPO fell under the jurisdiction of the Delhi High Court rather than the Madras High Court, he was to apply the principles enunciated in the Nippon Steel case. The Deputy Controller also held that in view of the opinion rendered in the Nippon Steel case, the time-lines prescribed in the Act and the Rules are all mandatory in nature and no relaxation of statutory deadlines can be read into the law. Hence, in both the cases, the petitions under Rules 137 and 138 were rejected.  

Even on facts, the Deputy Controller was of the view that the ground of ‘docketing error’ did not constitute sufficient cause to justify the extension of time since the same was an internal issue of the agent, which ought to have been addressed by the applicant/agent. The Deputy Controller also highlighted that there was no evidence that this alleged ‘docketing error’ resulted in similar delays in other countries as well. The Deputy Controller further went on to state that there was no evidence to show that ‘due care’ was taken by the applicants. He also noted that India had not agreed to the reinstatement of priority rights with WIPO, as provided for under Rule 49.6 of the PCT Regulations. Accordingly, the authority was of the opinion that there was no reason for condoning the delay, the effect of which would essentially be to restore the lost priority rights. Therefore, the request for extension of time beyond 31 months could not be allowed and the delay in filing the national phase application could not be condoned.  

Future outlook  

The rejection of the petitions under Rules 137 and 138 is likely to be challenged in the light of the fact that the order of the Madras High Court was specifically on the 31 month deadline and hence was more specific to the case on hand than the order of the Delhi HC. However, one trend seems to be clear – the IPO, Delhi, would probably reject petitions under Rules 137 and 138 if the cause argued by the applicant relates to internal problems of the applicant / agent, such as docketing errors or non-receipt of e-mails. While it remains to be seen how the other branch offices of the IPO would apply this rule in practice, applicants should avoid taking the Controller’s discretion under Rules 137 and 138 for granted.    

1.      Order 1 – Applicant: Information in Place Inc. USA:
2.      Order 2 – Applicant: Abbott Laboratories, USA:    

[The author is an Associate, IPR Division, Lakshmikumaran & Sridharan, New Delhi]
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