Puneet Kaushik & Anr. vs Union Of India & Ors.
2014 Latest Caselaw 6994 Del

         IN THE HIGH COURT OF DELHI AT NEW DELHI

                                             Judgment reserved on: 23.05.2014
                                          Judgment pronounced on: 19.12.2014

LPA 884/2013 & CM 4330/2014

PUNEET KAUSHIK & ANR.                                                  ..... Appellants

                             versus


UNION OF INDIA & ORS.                                                ..... Respondents
Advocates who appeared in this case:
For the Appellants  : Mr Pravin Anand and Ms Divya Vijan Bajaj.

For the Respondents   : Mr Amrit Pal Singh, CGSC with Mr M.P.Singh and Dr Kavita Taunk
                        for UOI.

CORAM:
HON'BLE MR JUSTICE BADAR DURREZ AHMED
HON'BLE MR JUSTICE SIDDHARTH MRIDUL

                                 JUDGMENT

SIDDHARTH MRIDUL , J

1. The instant appeal challenges the order dated 23.09.2013 passed by a

learned Single Judge in W.P.(C)1631/2013. The writ petition was disposed

of in the following terms:

"For the reasons stated hereinabove, the writ petition is disposed of with a direction to the respondents to grant within six (6) weeks from today, 27.09.2012 as the international filing date in respect of the PCT application submitted by the petitioners to the Indian Patent Office on 14.09.2012 and assign an international number to the said

application subject to their submitting the copies of specifications in required number, and paying the requisite fee/late fee, within such time as the respondents stipulate in this regard in the light of the provisions of PCT in this regard."

2. The facts necessary for the instant adjudication have been explained in

succeeding paragraphs.

3. The appellants claim to have filed a Patent Co-operation Treaty (PCT)

application (international application) before the Indian Patents Office

(India) on 14.09.2012 enclosing therewith the following documents:

               i)     Form-25 (in duplicate)
               ii)    Power of Attorney for Form-25 (copy)

iii) PCT Request along with Declaration of Inventorship (in duplicate)

iv) PCT Power of Attorney

v) Complete specification along with drawings (in duplicate)

vi) PCT fee calculation sheet and

(vii) PCT Easy documents in CD with the transmission fee of Rs.8,000/- and Form-25 fee of Rs.4,000/-

4. The PCT application being first filed for the invention, Form-25 was

enclosed as per the practice of Indian Patent Office.

5. There was a continued exchange of emails between the Counsel for

the appellants and the Respondent office wherein the grievance of the

appellants was that though the PCT application was duly submitted on

14.09.2012, the same had not been taken on record and neither was a filing

date allotted. The Respondent office communicated that the procedures for

processing a PCT application and a Form-25 request were separate and at the

relevant time on 14.09.2012, the counsel for the appellant Mr. Cyril was in

possession of only one set of documents and had the option to file either

Form-25 or a PCT application. Based on directions, he only filed documents

for a Form-25 request.

6. In the counter-affidavit, the Respondents have stated that the

appellants did not file an international application for patent under PCT

instead they had filed an application for permission for filing outside India

under Section 39 of the Patent Act, 1970 on Form-25. A resident of India

cannot file an application outside India without obtaining the requisite

permission and therefore, the purported PCT application was not given a

number.

7. Two main issues present themselves from this factual background:-

i) Whether a PCT application filed in the Indian Patent Office can be treated as an application made 'outside India' in the context of Section 39 of the Patents Act, 1970?

ii) What would be the relevant date of international filing?

8. The relevant provisions have been reproduced for ready reference.

Section 39 of The Patents Act, 1970 reads as under:-

"39. Residents not to apply for patents outside India without prior permission (1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless--

a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

b) either no direction has been given under sub- section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been

filed in a country outside India by a person resident outside India."

9. Section 35 of the Patents Act, 1970 reads as under:-

"35. Secrecy directions relating to inventions relevant for defence purposes (1)Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.

(2)Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.

(3)Without prejudice to the provisions contained in sub- section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply

as if the invention where one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him."

10. The learned counsel for the appellant challenged the practice adopted

by the Indian Patent Office as a receiving office for international applications

filed in India. It is argued that the relevant provision applicable for an

application filed before the Controller would be Section 35 and not Section

39. Section 39 applies when an Indian resident makes an application for

grant of patent 'outside India'. The ideal procedure according to the

appellant is that a PCT application should be processed in the same manner

as an application made before the Controller. An application made before the

Controller is required to undergo a screening for defence purposes and

consequent directions under Section 35. This is evident from the fact that

when an application is first filed in India, the applicant is permitted to file

outside India only on expiry of six weeks as envisaged by Section 39. The

inference to be drawn is that in these six weeks the screening under Section

35 is completed and if there are no directions issued or issued and revoked,

there is no bar to foreign filing. However, a PCT application, complete in all

aspects, cannot be denied from being allotted a filing date on the ground that

the permission under Section 39 was not obtained prior in time.

11. The argument regarding the relevant date of filing has been addressed

in two parts. The learned Counsel argues that the proceedings under Section

35 do not have the effect of a stay on the allotment of the filing date to the

patent application. If a direction is issued by the Controller, the application is

not further processed until clearance is obtained from the Ministry of

Defence, after which the application proceeds and the filing date continues to

be the date of receipt of the application. It is therefore, urged that the date of

filing should be accorded from the date of receipt of documents relating to

the patent i.e. 14.09.2012.

12. Reliance is placed on Article 11 and Rule 20.2 PCT Regulations to

emphasize that the international filing date is the date of receipt of the

application. Both provisions are being reproduced below:-

"Article 11 Filing Date and Effects of the International Application (1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,

(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:

(a) an indication that it is intended as an international application,

(b) the designation of at least one Contracting State,

(c) the name of the applicant, as prescribed,

(d) a part which on the face of it appears to be a description,

(e) a part which on the face of it appears to be a claim or claims.

(2)(a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.

(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

(3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

(4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property."

"20.2 Positive Determination under Article 11(1)

(a) If the receiving Office determines that, at the time of receipt of the papers purporting to be an international application, the requirements of Article 11(1) were fulfilled, the receiving Office shall accord as the

international filing date the date of receipt of the international application.

                  (b) The receiving Office shall stamp the request of      the
                  international application which it has accorded           an
                  international filing date as prescribed by               the
                  Administrative Instructions. The copy whose request      has
                  been so stamped shall be the record copy of              the
                  international application.

(c) The receiving Office shall promptly notify the applicant of the international application number and the international filing date. At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1(a)."

13. In the alternative, it is submitted that even if Section 39 were to apply

to the application filed by the appellant and the requisite permission was

required to be taken, the appellant was granted the permission on

27.09.2012. The Respondent office was in receipt of the documents on

14.09.2012 and the international filing date should date back to the day the

documents were submitted.

14. Per contra, it is the case of the respondent that a PCT application made

at the Indian patent office is an international application and the patent office

in India only collects such application on behalf of the international

organization and forwards the same to it as a transmitting office. Thereafter,

it is processed in accordance with the provisions of the treaty by the

International Bureau and the International Searching Authority. The

functional effect of such an application is that of an application made

'outside India' in terms of Section 39 and therefore, permission from the

Controller was required before such application could have been made.

15. Factually, it is also submitted that the appellants had merely filed

'Permission for filing outside India' on Form-25 and documents in support

thereof with prescribed fees on 14.09.2012. The counters for processing a

Form-25 request are separate from counters empowered to receive a PCT

international application. Documents filed for a PCT application directly go

to RMID-4 Section whereas foreign filing requests are handled by the EDP

Section.

16. We have heard rival submissions in sufficient detail. The Patent

Cooperation Treaty (PCT) is a treaty for rationalization and cooperation

between member countries with regard to filing, searching and examination

of patent applications and dissemination of scientific and technical

information contained therein. Legal rights emanating from a patent being

territorial in nature coupled with the necessity to secure protection in many

countries due to globalization of technology and trade and the cut throat

global competition, a need was felt for an alternate system to simplify the

filing and processing procedures. Under the PCT system, a single patent

application can be filed designating all the PCT member countries and

processed to a certain stage at a single place.

17. India became the 98th member of PCT and accordingly, international

applications for patents can be filed in India at various Receiving Offices

according to relevant jurisdiction. Such a filing has the effect of filing in

each of the PCT member countries which the applicant designates in his

application.

18. Perusal of the legislative history reveals that the provision contained in

Section 39 Patent Act, 1970 was deleted by the Patents (Amendment) Act,

1999. However, in the report of the Joint Committee presented to the Rajya

Sabha on the 19th December 2001, the committee members felt that Section

39 should be reintroduced to prevent flow of sensitive information, relating

to the country's security, outside India. Therefore, the purpose of Section 39

is to enable the Controller to apply secrecy directions which shall prevent the

flow of sensitive information relating to the country's security, outside India.

19. Section 39 Patents Act, 1970 stipulates that an Indian resident is

prohibited from applying for a patent for an invention outside India unless

either one of two conditions is satisfied:-

i) Written permission by or on behalf of the Controller for grant of a patent is obtained, or

ii) An application for a patent for the same invention has been made in India and either no direction has been given under sub- section (1) of Section 35 in relation to the application or all such directions have been revoked and a period of six weeks have elapsed.

20. Under Section 35, inventions relating to the defence of the

country will be subject to secrecy directions. The objective of Section 39 is

directly related to this purpose as is made clear by way of Section 39(1)(ii)

of The Patents Act,1970. It is noteworthy that both Sections 35 and 39 are

placed in Chapter VII of The Patents Act, 1970, which is titled "Provisions

for Secrecy of Certain Inventions". Therefore, from the scheme of the

legislation, prima facie it appears that the purpose behind the restriction

under Section 39 is to operate as a mechanism that enables the Controller to

meaningfully apply Section 35.

21. An Indian resident desirous of filing an international patent

application has two courses available to him. The first being that an Indian

application for grant of patent is filed before the Controller, the Controller

examines the application under Section 35 and on expiry of a period of six

weeks an international application can be filed outside India, if no secrecy

directions are issued. The international filing date dates back to the date

allotted by the Indian Patent office as per Section 7 (1A) read with (1B). The

second course is for an applicant to request the Controller for written

permission to file an international application and subsequent to grant of

such permission, an international application can be filed outside India. This

is the procedure mandated by Section 39.

22. The legal consequences flowing from a PCT application filed in the

Indian Patent office are that of an application filed outside India. The

Receiving office is only empowered to assure that a PCT application is in

conformity with all the prescribed documents under the treaty. All further

processing is done by the International Bureau and the International

Searching Authority.

23. In the factual matrix of the present case, the appellant has expressly

moved a PCT application at the Indian Patent office. This is evidenced by

the fact that the application was moved by filing a request under Form-25,

which is specifically prescribed for a PCT application. Section 39 is

therefore, to apply to such PCT application. The Respondent office could not

have accepted an application without the requisite permission simply owing

to the fact that Section 39 bars such application to be made.

24. Coming to the issue of filing date, the same can be accorded only

when a complete application is filed. The argument advanced by the

appellant seeking dating back of the filing date to the day the Form-25

request was made cannot be accepted because the application on 14.09.2012

was not complete. As rightly directed by the learned Single Judge, the filing

date can only be accorded once the requisite permission is granted i.e.

27.09.2012. It may be pointed out that if the appellant had adopted the

course of first filing an Indian application for patent and on expiry on six

weeks, an international application were to be filed then the international

filing date would have dated back to the date when the Indian application

was made. However, such is not the present case and the appellant having

consciously chosen a particular course is barred from claiming an alternate

process.

25. In view of the foregoing discussion, we agree with the line of

reasoning adopted by the learned Single Judge and direct the respondents

that the date of 27.09.2012 be allotted as the international filing date to the

application filed by the appellants subject to fulfilling of the necessary

formalities mentioned by the learned Single Judge in accordance with the

provisions of the Indian Patent Act, 1970 and the Patent Co-operation

Treaty.

26. The appeal is dismissed in the aforementioned terms.

SIDDHARTH MRIDUL, J

BADAR DURREZ AHMED, J DECEMBER 19, 2014 mk