Delhi High Court
Telefonaktiebolaget Lm Ericsson ... vs Union Of India & Ors. on 11 March, 2010
Author: S. Muralidhar
IN THE HIGH COURT OF DELHI AT NEW DELHI
W.P.(C) No. 9126 of 2009
TELEFONAKTIEBOLAGET LM ERICSSON
(PUBL) ..... Petitioner
Through: Mr. Ramesh Babu MR and Mr. Abhai
Pandey, Advocates.
versus
UNION OF INDIA & ORS. ..... Respondents
Through: None.
CORAM: JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the order? No
2. To be referred to the Reporter or not? Yes
3. Whether the order should be reported Yes
in Digest?
ORDER
11.03.2010
1. The Petitioner is a Swedish company which is stated to be a world leader
in providing telecommunication equipments and related services to mobile
and fixed network operators globally. The Petitioner had filed a National
Phase Patent Application No. 3380/DELNP/2005 on 29th July 2005 for an
invention titled "A Method and Apparatus For Supporting Content
Purchases Over a Public Communication Network." It is stated that in
accordance with Section 11B of the Act and Rule 24(1)(i) of the Patents
Rules 2003, the Petitioner filed an application in Form 18 with the
prescribed fees requesting the Controller of Patents, Respondent No. 2
herein, to examine the said application. The Petitioner‟s application was
published in the Patent Office Journal dated 1st June 2007.
2. A first examination report was issued on 8th October 2007 in which
W.P. (Civil) No. 9126 of 2009 page 1 of 9
certain defects were pointed out. The Petitioner states that it filed a reply on
10th December 2007 in compliance with what was indicated in the first
examination report.
3. By a letter dated 25th July 2008, Respondent No.2 communicated another
examination report reiterating the very same objections as raised in the first
examination report. No explanation was offered for not considering the
Petitioner‟s reply to the first examination report. The last date for
complying with the defects pointed out was indicated as 8th October 2008.
At the request of the Petitioner, on 11th August 2008 the Petitioner‟s patent
agent met the concerned examiner of Respondent No.2 to explain its reply to
the first examination report.
4. On 22nd September 2008 within the stipulated time limit granted in the
second examination report, the Petitioner filed a further reply explaining the
objections indicated in the second examination report. It was further
requested that in the event the decision of Respondent No.2 was going to be
adverse to it, the Petitioner should be given an opportunity of being heard in
terms of Section 14 of the Act before a final order was passed.
5. On 10th October 2008, Respondent No.2 wrote the following letter to the
Petitioner‟s attorney:
"Sub: Patent Application No.3380/DELNP/2005
Sir,
I am to invite a reference to the correspondence
resting with this office letter no.3380/DELNP/2005/3655
Dated 25/07/2008 and to state that as the amendment
W.P. (Civil) No. 9126 of 2009 page 2 of 9
observation submitted on 22/09/2008 as well as
discussion held with Mr. Sushil Kumar of LEX ORBIS,
agent of applicant, and their submission on 08/10/2008
and have been duly considered. The specification is
found still defective in following respects
1. Subject matter as described and claimed in
claims does not constitute an invention under section
2(1) (j) of the patents Act, 1970 in view of cited
document i.e.US2002156732, US2002138601,
WO02080061, WO9931610, WO02102016.
2. Claims fall within the scope of sub clause (K) of
section 3 of IPA-1970.
3. Title is inconsistent with description and claims.
Last date for putting the application in order for grant has
expired on 08/10/2008. The application is deemed to
have been abandoned under the provisions of section 21
(1) of the said Act."
6. The grievance of the Petitioner is two-fold. The first is that despite
replying to the objections raised in both the first examination report as well
as the second examination report, the Respondent No.2 has held that the
Petitioner‟s Application "is deemed to have been abandoned" under Section
21(1) of the Act. Thus there was no opportunity of filing an appeal which
would otherwise have been available to the Petitioner had an order rejecting
the application been passed under Section 15 of the Act as the order under
Section 21 of the Act was not appealable under Section 117A of the Act.
Secondly, it is submitted that the above order does not deal with the detailed
replies filed by the Petitioner to the objections raised in the examination
reports. The Petitioner cannot be said to have „abandoned‟ its application.
The request of the Petitioner for an early hearing under Section 14 of the Act
W.P. (Civil) No. 9126 of 2009 page 3 of 9
was also not acceded to.
7. Learned counsel for the Petitioner has relied on the decision of this Court
in Ferid Allani v. Union of India 2008 (37) PTC 448 (Del.) where in
similar circumstances this Court had remanded the matter to the Controller
of Patents for a fresh consideration of the application on merits.
8. This Court directed notice to issue in the case on 21 st September 2009.
Despite accepting notice on that date, learned counsel for the Respondents
did not appear on the following date i.e. on 24th September 2009. The Court
then passed the following order:
"No appearance is made on behalf of the respondents
today. Mr. Sachin Dutta, Standing Counsel, is present in
the Court and is asked to enter appearance. A fresh copy
of the paper book will be furnished to Mr. Sachin Dutta,
Standing Counsel, during the course of the day. Mr.
Sachin Dutta, Standing Counsel, will obtain instructions
and, if required, file counter affidavit. Learned counsel
for the Petitioner states that the matter is covered by the
decision of this Court in Ferid Allani v. Union of India
& Ors. , 2008 (37) PTC 448 (Del.).
List again on 18th December, 2009."
9. On 18th December 2009, appearance was entered into by a different
counsel for the Union of India („UOI‟). Further time of four weeks was
granted to the UOI for filing a counter affidavit. Today none appears for the
UOI, despite a passover. There is also no counter affidavit on record.
10. The question that arises in the present case is whether, in the facts and
W.P. (Civil) No. 9126 of 2009 page 4 of 9
circumstances of the case, it could be said that the Petitioner has
„abandoned‟ its patent application in terms of Section 21(1) of the Act.
11. Section 21(1) of the Act reads as under:
"21 - Time for putting application in order for grant. [(1)
An application for a patent shall be deemed to have been
abandoned unless, within such period as may be prescribed,
the applicant has complied with all the requirements imposed
on him by or under this Act, whether in connection with the
complete specification or otherwise in relation to the
application from the date on which the first statement of
objections to the application or complete specification or other
documents related thereto is forwarded to the applicant by the
Controller.
Explanation.-Where the application for a patent or any
specification or, in the case of a convention application or an
application filed under the Patent Cooperation Treaty
designating India any document filed as part of the application
has been returned to the applicant by the Controller in the
course of the proceedings, the applicant shall not be deemed to
have complied with such requirements unless and until he has
re-filed it or the applicant proves to the satisfaction of the
Controller that for the reasons beyond his control such
document could not be re-filed."
12. The above provision has to be read in the context of Section 12 of the
Act, which reads as under:
"12. Examination of application:
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
W.P. (Civil) No. 9126 of 2009 page 5 of 9
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 the3[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."
13. A collective reading of the above provisions shows that the applicant is
required to deal with the objections raised in the reports that emerge as a
result of the examination of the application. Whether the applicant has
satisfactorily met the objections is another matter. In the context of Section
21 an applicant should be deemed to have "abandoned" his application only
when such applicant fails to comply with all the requirements imposed on
him or under this Act. This can be contrasted with Section 15 which talks of
the satisfaction of the Controller. Section 15 of the Act reads as under:
W.P. (Civil) No. 9126 of 2009 page 6 of 9
"15. Power of Controller to refuse or require amended
applications, etc., in certain cases. Where the Controller is
satisfied that the application or any specification or any other
document filed in pursuance thereof does not comply with the
requirements of this Act or of any rules made thereunder, the
Controller may refuse the application or may require the
application, specification or the other documents, as the case
may be, to be amended to his satisfaction before he proceeds
with the application and refuse the application on failure to do
so."
14. Where in response to an examination report, an applicant does nothing
by way of meeting the objections raised therein within the time stipulated,
and does not seek extension of time for that purpose only then it can be said
that such application should be "deemed to have been abandoned". If he has
replied but such reply is not found satisfactory, even after a further
opportunity if any is given, then the Controller should proceed to take a
decision in terms of Section 15, after complying with Section 14 of the Act.
15. As pointed out in Ferid Allani "abandonment" requires a conscious act
on the part of the Petitioner which would manifest the intention to abandon
the application. That judgment also refers to Section 80 of the Act and Rule
138 of the Patents Rules which gives discretionary powers to the Controller
to extend the time for complying with a requirement. In the instant case the
Petitioner responded to each of the objections set out in the examination
report in writing within the time prescribed. It cannot, therefore, be said that
it failed to respond to the objections and, therefore, did not comply with the
requirements imposed on it under the Act. In other words, the basic factual
W.P. (Civil) No. 9126 of 2009 page 7 of 9
condition for attracting the deemed fiction of "abandonment" in terms of
Section 21(1) of the Act, was non-existent in the instant case.
16. Importantly, the intention of the Petitioner not to abandon its application
was evident in its response dated 22nd September 2008 where it requested
that in the event the Controller was not inclined to grant its patent, it may be
afforded an opportunity of being heard. Such an opportunity is clearly
envisaged in Section 14 itself. This is further provided for in Section 80 of
the Act and Rule 129 of the Patent Rules. While discussing the above
provisions, this Court in Ferid Allani held that there was a duty of the
Controller to give a hearing to an applicant before exercising any
discretionary power which was likely to adversely affect an applicant‟s
claim for registration of patent.
17. Lastly, this Court finds merit in the contention of the Petitioner that by
holding that the Petitioner should be deemed to have abandoned its
application in terms of Section 21(1) of the Act for the three reasons
mentioned therein, the Controller of Patents has in effect rejected the
application for patent. Such an order is an order relatable to Section 15 of
the Act. However this has been done without indicating the reasons why the
reply filed by the Petitioner to the objections was not found satisfactory.
Also, there is no explanation for denying the Petitioner an opportunity of
hearing in terms of Section 14. Since no order was passed under Section 15
of the Act, the Petitioner is also deprived of filing an appeal under Section
117A of the Act.
W.P. (Civil) No. 9126 of 2009 page 8 of 9
18. For the aforementioned reasons, this Court sets aside the impugned order
dated 10th August 2008 passed by Respondent No.2. The Petitioner‟s
application will be restored to the file and be dealt by the Respondent No.2
in accordance with law. If Respondent No.2 finds that the Petitioner has not
made out a case for grant of patent, it will pass a reasoned order under
Section 15 of the Act. Of course, prior to doing so, the Petitioner will be
offered an opportunity of being heard, in terms of the request already made
by it under Section 14 of the Act.
19. The writ petition is accordingly allowed with no order as to costs.
S. MURALIDHAR, J.
MARCH 11, 2010
dn
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