Nippon Steel Corporation vs Union Of India
2011 Latest Caselaw 731 Del

         IN THE HIGH COURT OF DELHI AT NEW DELHI


                                 W.P. (C) 801 of 2011


 NIPPON STEEL CORPORATION                     ..... Petitioner
               Through: Mr. Sudhir Chandra, Senior Advocate with
               Mr. Pravin Anand, Ms. Tusha Malhotra and
               Mr. Aditya Gupta, Advocates


                        versus


 UNION OF INDIA                               ..... Respondent
               Through: Mr. Sunil Kumar with
               Mr. Rajiv Ranjan Mishra, Advocate.


 CORAM: JUSTICE S. MURALIDHAR

 1. Whether Reporters of local papers may be
     allowed to see the judgment?                            No
 2. To be referred to the Reporter or not?                  Yes
 3. Whether the judgment should be reported in Digest?      Yes

                                 ORDER

08.02.2011

C.M. APPL No. 1695/2011

Exemption allowed subject to all just exceptions.

The application is disposed of.

WP (Civil) No. 801/2011 & CM APPL No. 1694/2011

1. An interesting question of law involving the interpretation of Section 11-B

(1) and (4) of the Patents Act, 1970 („Act‟) and Rule 24 B of the Patents

Rules 2003 („Rules‟) arises in this writ petition.

2. With the consent of Mr. Sudhir Chandra, learned Senior counsel appearing

for the Petitioner and Mr. Sunil Kumar, learned counsel appearing on advance

notice for the Respondent, this petition has been heard finally.

3. The Petitioner is a Corporation organized under the laws of Japan. It is

stated that the Petitioner has the world‟s top class technology in the field of

medium-high grade steel where high workability, rust prevention performance

and weld strength are required. The Petitioner is engaged in the steel industry

and is involved in intensive research and development in relation to it. The

Petitioner is also involved in comprehensive engineering, from the

construction of steelmaking plants and plants related to environment and

energy, to the construction of long bridges, buildings etc.

4. On 9th February 2007, the Petitioner filed an application being

PCT/JP2007/052796 under the Patent Cooperative Treaty („PCT‟) that

designates India as a member. The said application claimed priority date of 9 th

February 2006 from a Japanese Patent application No. 2006-031911. The

Petitioner filed an Indian National Phase Patent application under No.

6123/DELNP/2008 in respect of an invention entitled "TINNED STEEL

SHEET EXCELLENT IN CORROSION RESISTANCE" on 11th July 2008

within the time period of 31 months from the priority date as prescribed by

Rule 20 (4) (i) of the Rules as amended by the Patents (Amendment) Rules,

2006.

5. Under Rule 24-B of the Rules, as amended by the Patents (Amendment)

Rules 2006, a Request for Examination („RFE‟) has to be made in terms of

Section 11-B (1) of the Act within a period of 48 months from the date of

priority of the application or the date of filing the application, whichever is

earlier. Since the priority date in respect of the Petitioner‟s patent application

was 9th February 2006, being the date of filing of the Japanese Patent

application, the RFE had to be made on or before 9th February 2010.

6. It is stated that on 22nd August 2008, the Petitioner made a request for

amendment in the patent application in terms of Section 57 of the Act to

correct certain typographical errors that had crept into the complete

specification. The Petitioner states that the said request for amendment was

made in Form No. 13. It is further stated that owing to visual similarity of the

digits „3‟ and „8‟, a docketing error occurred in the office of the Petitioner‟s

attorney, Anand & Anand. It is stated that the person in charge of docketing in

the Petitioner‟s attorney‟s office, by mistake, entered the date for filing

request for amendment (Form 13) as the date of filing of the RFE (Form 18).

Due to this accidental docketing error in the computer maintained by the

Docketing-in-charge Mr. Tony Mon George at the office of the Petitioner‟s

attorney, the deadline for filing the RFE in India was inadvertently missed.

7. It is stated that on 25th October 2010 the Petitioner asked its attorneys for

an update on the status of the patent application. It is stated that it was only

then that the Petitioner‟s attorneys realized, on 26th October 2010, that the

deadline for filing the RFE had been inadvertently missed. Enquiries were

made with the Docketing in-charge on 27th October 2010. Steps were

immediately taken on 28th October 2010 to rectify the said error by filing an

application for amendment of the priority date of the subject application under

Section 57 (5) of the Act. The amendment sought was to disregard the

Japanese priority date of 9th February 2006 and to change the application‟s

priority date to the international filing date of the PCT application i.e. 9 th

February 2007. The idea was that by making this amendment, the deadline for

filing the RFE would stand extended to four years (48 months) from 9th

February 2007 and would expire on 9th February 2011.

8. Thereafter, on 1st November 2010, the Petitioner‟s attorney filed a RFE in

Form 18. It is stated that the said application was returned due to "the

„RIGID‟ configuration of the software module at the Indian Patent Office"

which did not accept the said RFE because the amendment to the priority date

had not been modified in the said module.

9. The Petitioner‟s attorney filed another RFE application on 18th January

2011 on the presumption that the amendment to the priority date would have

been carried out in the Office of the Controller of Patents (CoP) since neither

the Petitioner nor its counsel was informed of its refusal. However, the

request for amendment was not recorded in the software module and,

therefore, the RFE was once again returned.

10. On 1st February 2011, the Assistant Controller of Patents & Designs

(ACoP) sent the following letter to the Petitioner‟s attorneys:

"To M/s. Anand & Anand, B-41, Nizamuddin East, New Delhi - 110 013.

Sub: Patent application No. 6123/Delnp/2008-Request for amendments in the priority date.

Sir,

Kindly refer to your letter dated 28th October 2010 received in

this office on 29th October 2010 submitting therewith a request on form 13 requesting to change the priority date of Japanese application No. 2006-031911 dated 9th February 2006 to International filing date 9th February 2007 of PCT/JP/2007/052796 as amendments under Section 57 (5) of the Act.

In this connection, it may noted that your request on Form 13 to change the priority date of Japanese Application (9 th February 2006) to International filing date (9th February 2007) has become time barred since, the said application is deemed to have been withdrawn under Section 11 B (4) of the Act due to non-filing of the request for examination within the prescribed period which was due on 9 th February 2010 and your request on form 13 was filed on 29th October 2010.

Accordingly, your documents along with cheque (No. 149467 for Rs. 10,000/-) returned herewith."

11. On 1st February 2011 the Petitioner‟s attorney wrote to the CoP giving the

details of the patent application and enclosed an affidavit dated 5 th January

2011 of Mr. Toni Mon George explaining the „docketing error‟ that led to the

deadline for filing the RFE being missed. In response thereto the Deputy

Controller of Patens and Designs (DCoP) sent the following e-mail to the

Petitioner‟s attorney on 2nd February 2011:

"This office has already replied your letter yesterday by letter. In this mail you are stating about the facts if the form 13 would have been allowed. Since the application became withdrawn on 9th February 2010 the consideration of form 13 has become irrelevant. Further, while joining PCT India has made specific declaration, about which I am sure you all might be aware that India has not agreed to restoration of priority right. This

declaration is available on WIPO PCT site and also PCT hand book. Please examine your PCT deadlines carefully in future to avoid such problems."

12. Thereafter, when the Petitioner‟s request to the CoP to allow the

amendment did not succeed, the present writ petition was filed seeking inter

alia a writ of certiorari to quash the decisions dated 1 st and 2nd February 2011

issued by the office of the DCoP which declared the Petitioner‟s application

as deemed to be withdrawn; a writ of mandamus directing the Office of CoP

to take on record the request made in Form 13 on 28th October 2010 for

amendment regarding change in priority date to 9th February 2007; a direction

to the CoP to take on record the RFE filed in Form 18 on 1st November 2010

and issue an examination report on the subject application in accordance with

the Act and Rules.

13. Mr. Sudhir Chandra, learned Senior counsel appearing for the Petitioner

referred to the various provisions of the Act and Rules and submitted that a

hyper-technical view was taken by the Office of the CoP on the time-limits

set out in Section 11-B (1) of the Act read with Rule 24-B of the Rules for

filing an RFE. He submitted that the CoP had committed a serious error in

treating the patent application of the Petitioner as deemed to have been

withdrawn on 11th February 2010 in terms of Section 11-B (4) of the Act.

According to him, in terms of Section 57 (5) of the Act there was no

limitation for filing a request for amendment of the priority date of the patent.

The Petitioner filed such a request on 22nd August 2008. Once the amendment

was allowed it would relate back to the date of the application for grant of

patent. Such an application for amendment could therefore be filed even in

respect of an application for grant of a patent that was „deemed to be

withdrawn‟ in terms of Section 11-B (4) of the Act. Once the amendment was

allowed at any time thereafter it would revive the application.

14. Mr. Chandra next submitted that the reason for the Petitioner failing to file

RFE on or before 9th February 2010 was bonafide. The computer system of

the Petitioner‟s attorney did not show any warning as regards the expiry of the

deadline for filing the RFE since it had wrongly docked the application for

amendment as an RFE. It is submitted that the CoP ought to have accepted the

explanation offered in the affidavit of Mr. Tony Mon George. Relying

extensively on the decision of the Supreme Court in Kailash v. Nanhku

(2005) 4 SCC 480 Mr. Chandra argued that rules of procedure were

handmaids of justice and could not be rigidly applied so as to defeat justice.

He repeatedly urged that only where substantive rights of parties would be

affected, the time limits set by a statute had to be rigidly applied. Since in this

case no prejudice would be caused to the office of the CoP there should have

been no difficulty in allowing the Petitioner‟s request for amendment of the

priority date to 9th February 2007 which, although to the Petitioner‟s

detriment, would in turn have shifted the deadline for the filing of the RFE to

9th February 2011. On the other hand, the Petitioner would be subject to

tremendous loss and hardship in the event the amendment was not allowed

since its application for grant of patent in India would not be able to be

revived thereafter.

15. Thirdly, it is submitted by Mr. Chandra that there was no rigidity to the

deemed withdrawal of the patent application in terms of Section 11-B (4) of

the Act if an RFE was not filed within 48 months of the priority date in terms

of Rule 24-B of the Rules. Those provisions, according to him, were only

directory. He submits that even in a worse case of deemed „abandonment‟ in

terms of Section 21 of the Act, this Court had in Ferid Allani v. Union of

India 2008 (37) PTC 448 (Delhi) and Telefonaktiebolaget LM Ericsson

(PUBL) v. Union of India 168 (2010) DLT 461 adopted a realistic and

practical approach and accepted the explanation offered by the Petitioners as

to why their respective patent applications should not be so treated. According

to him, the facts of the present case were far better than the facts of those

cases.

16. Fourthly, developing on the above points, Mr. Chandra submitted that

where no substantive right of anyone was going to be affected by extending

the time limit for doing an act, the CoP ought to take liberal view and

condone the delay in the interests of justice. He referred to Rule 137 of the

Rules. The abandonment of a claim would amount to giving up of the claim,

which was not true in the present case. It is submitted that there was no basis

for the CoP to contend that there was no patent application existing as on 9th

February 2010 in respect of which the amendment could be allowed.

According to Mr. Chandra the patent application was "physically there" in the

Office of the CoP, and could be amended at any time.

17. Mr. Sunil Kumar, learned counsel for the Respondent on the other hand

supported the stand of the CoP by pointing out that once the deadline of 9th

February 2010 was crossed, and no RFE was filed by then, there was no

patent application existing in the eye of law. There was no question of

permitting the Petitioner thereafter to amend a non-existing patent application.

In any event, the amendment sought on 22nd August 2008 was not with

reference to the priority date and even if that amendment had been allowed, it

could not have saved the patent application. He submitted that it is not for the

Court to rewrite the time limits set out in the Act and the Rules.

18. The above submissions have been considered. It is necessary to examine

the scheme of Section 11-B of the Act as amended by the Patents

(Amendment) Act 2005 and the corresponding Rule 24-B of the Rules as

amended by the Patents (Amendment) Rules 2006 which read as under:

"11-B Request for examination: (1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.

(3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person;

(4) In case the Applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub- section (3), the application shall be treated as withdrawn by the applicant.

Provided that-

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under Section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction."

19. The relevant portion of Rule 24-B of the Rules reads as under:

"24-B Examination of application - (1) (i) A request for examination under Section 11-B shall be made in Form 18 (within forty-eight months) from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(ii) the period within which the request for examination under sub-section (3) of Section 11 B to be made shall be forty eight months from the date of priority, if applicable, or forty eight months from the date of filing of the application;

(iii) the request for examination under sub-section (4) of Section 11 B shall be made within forty eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

(iv) The request for examination of application as filed according to the Explanation under sub-section (3) of Section 16 shall be made within forty eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later."

20. It is not in dispute that in terms of the above provisions, given the fact that

the priority date mentioned in the Indian Patent Application was 9 th February

2006, the deadline for filing the RFE expired on 9th February 2010. There is

nothing in either Section 11-B of the Act or Rule 24-B of the Rules that gives

the power to CoP to condone the delay in the filing of the RFE.

21. Mr. Chandra referred to Rule 137 of the Rules to urge that CoP does have

powers in that regard. Rule 137 reads as under:

"137. 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."

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.

23. Section 57 of the Act deals with amendment of application and

specification or any document relating thereto before the CoP. Section 57 (5),

which permits amendment to the priority date, reads as under:

"57 (5) An amendment under this Section of a complete specification may be, or include, an amendment of the priority date of a claim."

24. While an applicant can seek to amend even the priority date of a patent

application in terms of Section 57 (5) of the Act, such request for amendment

can be made only in relation to an application that exists in law. To

recapitulate the facts in the present case, the request for amendment filed by

the Petitioner in Form 13 on 22nd August 2008 was not for amending the

priority date. It was only for correcting typographical errors. It was wrongly

docked as Form 18 in the computer of the Petitioner‟s attorney. As far as the

Office of the CoP was concerned, that application would have been treated as

one under Form 13. Going by the affidavit of Mr.Tony Mon George, the

Petitioner‟s attorney knew that it had, on 22nd August 2008, only filed an

application for amendment of typographical errors. Even if that application

had been allowed, the priority date of the application would have remained as

9th February 2006. Therefore, the deadline for filing the RFE would have

continued to be 9th February 2010. Since, in any event, no RFE was filed

before the expiry of the deadline in terms of Section 11-B (4) of the Act, the

patent application stood withdrawn after 9th February 2010.

25. 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 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, it is not possible for this Court to 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, are merely „directory‟ and not mandatory. In fact, 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.

26. No comparison can be drawn between Order VIII Rule 1 of the Code of

Civil Procedure, 1908 („CPC‟) which prescribes the time-limit for filing a

written statement in a suit and the provisions of the Act and the Rules which

prescribe time limits for steps at various stages of a patent application. Even

in Kailash v. Nanhku, the Supreme Court cautioned that power to condone

the delay in filing a written statement beyond the statutory outer limit of 90

days had to be exercised very sparingly. In the later decisions in R.N. Jadi &

Brothers v. Subhashchandra (2007) 6 SCC 420 and Mohammed Yusuf v.

Faij Mohammad (2009) 3 SCC 513 the Supreme Court has further clarified

this position.

27. 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 DCoP in the email of 2 nd

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 9 th

February 2010, permitted it to amend the priority date of such application.

28. This Court is of the view that the decisions in Ferid Allani v. Union of

India and Telefonaktiebolaget LM Ericsson (Publ) v. Union of India were

rendered in a different factual context and do not aid the Petitioner‟s

submissions. The Petitioners there were in correspondence with the Office of

the CoP in relation to the defects pointed out in their respective patent

applications and had in fact made requests for oral hearing. In those

circumstances, this Court held that those Petitioners could not be held to have

abandoned their claims for the purposes of Section 21 of the Act. As far as the

present case is concerned, the Petitioner missed the deadline of 9 th February

2010 for filing an RFE. It realised the error much later and on 28th October

2010, filed an application for amending the priority date by which time the

patent application itself ceased to exist. The decisions of the Commissioner of

Patents and Trademarks, USA in Re Katrapat, AG 6 U.S.P.Q. 2 D (BNA)

1863 and Re Application of Ong, et al (Application No. 11/754, 832) are also

of no assistance since the patent law regime in our country is governed by the

Act and Rules which in themselves constitute a complete code.

29. For the aforementioned reasons, this Court finds no error whatsoever in

the impugned decisions of the CoP to decline the Petitioner‟s request for

amendment of the priority date. The writ petition is without merit and it is

dismissed as such. The pending application also stands dismissed.

S. MURALIDHAR, J.

FEBRUARY 08, 2011 rk