Delhi High Court

Mr. Carlos Alberto Perez Lafuente vs Union Of India And Ors on 23 September, 2011

Author: Rajiv Sahai Endlaw

            *IN THE HIGH COURT OF DELHI AT NEW DELHI
                                  Date of decision: 23rd September, 2011
+               W.P.(C) 6975/2011 & CM No.16014/2011 (for stay).

         MR. CARLOS ALBERTO PEREZ LAFUENTE ..... Petitioner
                      Through: Ms. Prathiba M. Singh & Ms. Saya
                                 Choudhary, Adv.
                             versus
         UNION OF INDIA AND ORS                    ..... Respondents
                      Through: Mr. Jatan Singh, CGSC & Mr.
                                 Prashant Ghai, Adv.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1.       Whether reporters of Local papers may      Not necessary
         be allowed to see the judgment?

2.       To be referred to the reporter or not?           Not necessary

3.       Whether the judgment should be reported          Not necessary
         in the Digest?
                      [

RAJIV SAHAI ENDLAW, J.

1. The petition impugns the communication dated 25 th November,

2010 of the respondent no.4, Office Supdt. The Patent Office of

Government of India, intimating that Form 18 in respect of the Patent

Corporation Treaty (PCT) application preferred by the petitioner could not

be taken on record.

2. The counsel for the petitioner has contended that the Form 18, for

examination of the patent application, filed by the petitioner on 19 th

November, 2010 has not been accepted for the reason of the same having

been filed beyond the time prescribed in Section 11B of The Patents Act,

1970 r/w Rule 24 B(1)(i) of The Patents Rule, 2003.

4. Though the letter dated 25th November, 2010 does not give any

reason for non acceptance thereof but the counsel for the respondents

appearing on advance notice admits that the reason for not taking the Form

18 on record is of the same having been filed beyond time.

5. The contention of the counsel for the petitioner is that there is

inconsistency between the sub-section (1)(i) of Rule 24B and the PCT

Guidelines for National Phase Falling in India published by the World

Intellectual Property Organization (WIPO) as to the time for filing Form

18.

6. Being of the view that the contentions of the petitioner (as have been

raised in the petition) have not been examined by the respondent no.2

Controller General of Patents, Designs, Trademarks and Geographical

Indications and that if a prima facie case is found in favour of the

petitioner, it is appropriate that the matter be remanded for consideration

and for a reasoned order by the authorities concerned, the counsels have

been heard.

7. Section 11B of the Act is as under:-

"11B 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.

(2) ......... omitted with effect from 1.1.2005. (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-seciton (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.]"

8. Section 11B (1) though prohibits making of a request for

examination of the application, form whereof is prescribed as Form 18,

after the period prescribed therefor does not prescribe the period for

preferring the said application/form. Section 11B(4) provides for the

consequence of not preferring the application within the prescribed time

i.e. of the application being treated as withdrawn by the applicant.

9. The time for making the application is prescribed in Rule 24B(1)

which is as under:-

"24B Examination of application (1)(i) A request for examination under Section 11B 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 11B to be made shall be forty-eight months from the date of priority if application, or forty-eight months from the date of filing of the application;

(iii) The request for examination under sub-section(4) of section 11B 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;

(v) The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be [the period specified under the section11B before the commencement of the Patents (Amendment) Act, 2005 or] the period specified under these rules, whichever expires later."

10. The date of priority referred to in Rule 24B is defined in Section 2

(w) of the Act as having the meaning assigned to it by Section 11. Section

11 defines the priority dates for various types of applications and according

to the counsel for the petitioner, the priority date for PCT applications as

per sub Section (6) of Section 11 r/w Section 135 dealing with the

convention applications is the date on which the basic application in any of

the convention countries is made.

11. It is stated that the basic application by the petitioner was made first

in Europe on 28th March, 2006 and the date of PCT filing abroad is 27 th

March, 2007 and the date of filing the PCT in India is 28th August, 2008.

12. Rule 24B (1)(i) prescribes that a request for period examination

under Section 11B shall be made in Form 18 within forty eight months to

be counted from the date of priority of the application or from the date of

filing of the application, whichever is earlier.

13. The counsel for the respondents contends that the Form 18 preferred

by the petitioner has not been taken in record for the reason of the date of

priority in the case of the petitioner being 28th March, 2006 and the Form

18 filed on 19th November, 2010 being beyond the time of 48 months

therefrom. However, if the period of forty eight months is to be counted

from the date of filing of the application, then the Form 18 filed on 19th

November, 2010 was within time. Form 18 filed by the petitioner has thus

been rejected because of the words "whichever is earlier" in Rule

24B(1)(i).

14. However Rule 24B(1)(iii) prescribes the period for filing request for

examination under Section 11B(4) as 48 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.

14. Though at first blush it appears that there is a conflict between Rule

24B(1)(i) & Rule 24B(1)(iii) since Section 11B(4) as aforesaid does not

provide for filing of any application different from that prescribed in

Section11B(1) and only provides the consequences of non-filing within the

prescribed time, but on further consideration it is found that Rule

24B(1)(iii) provides for an application under proviso (ii) to Section 11B(4),

i.e. for cases where a secrecy direction under Section 35 had been issued -

in these cases, Form 18 is to be filed either within time prescribed in of

Rule 24B1(i) or within six months from the date of revocation of the

secrecy direction, whichever is later.

15. The argument of the counsel for the petitioner however as aforesaid

is of conflict between Rule 24B(1)(i) and the Guidelines. The said

guideline is as under:-

"IN.09 REQUEST FOR EXAMINATION. A patent application shall not be examined unless the applicant or any other interested person makes a request for such examination in the prescribed manner within 48 months from the date of priority of the application (if applicable) or from the date of filing of the patent application, whichever is later. Such a request must be made on Form 18 (see Annex IN.XI) and be accompanied by the prescribed fee."

16. The counsel for the petitioner contends that the petitioner as per the

Guideline, treated the period for filing Form 18 as 48 months from date of

priority or filing the application for patent, "whichever is later" and the

filing of Form 18, in terms of Guidelines is within time. She further

contends that even through the Act and Rules do not provide for

condonation of delay in filing Form 18 but benefit of apparent conflict

should be given to the petitioner.

17. The counsel for the respondents contends that the respondents are

concerned with and are to abide by the provisions of the Act and the Rules

only and not by the Guidelines published by WIPO.

18. The counsel for the petitioner rejoins that the Guidelines are a part

of the PCT and the persons desirous of filing the patent, particularly the

foreigners are guided thereby and the same cannot be ignored and the

provisions of the Act and the Rules have to be in consonance therewith.

Reliance is placed on Rule 23 which is as under:-

"Rule 23 - The requirement under this Chapter to be supplemental of the regulations, etc. under the Treaty. (1) The provisions of this Chapter shall be supplemental to the PCT and the regulation and the administrative instructions made thereunder. (2) In case of a conflict between any provisions of the rules contained in this Chapter and provisions of the Treaty and the regulations and the administrative instructions made thereunder the provisions of the Treaty and the regulations and the administrative instructions made thereunder shall apply in relation to international applications."

19. There is an apparent conflict between the Guidelines and Rule

24B(1)(i) while one provides for the time of 48 months to be counted from

the two alternative commencement dates, "whichever is later", the other

uses the expression "whichever is earlier". The possibility of being

misguided cannot be rules out. Though the argument of the counsel for the

respondents of the respondents being bound by the Act and Rules is

attractive and application of Rule 23 is by express words found limited to

Chapter III of the Rules only and not to Chapter IV in which Rule 24B is

to be found but since the matter of conflict with the Guidelines does not

appear to have been considered by the respondent no.2 Controller General,

rather than this Court hearing the counsels in first instance, it is deemed

expedient that the matter be remanded to the respondent no.2 Controller