Delhi High Court
Agrivida Inc vs Union Of India And The Controller ... on 23 May, 2022
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 23rd May, 2022
+ W.P.(C)-IPD 84/2021
AGRIVIDA INC ..... Petitioner
Through: Mr. Rajiv Kumar Choudhry,
Advocate (M:9811028098)
versus
UNION OF INDIA AND THE CONTROLLER GENERAL OF
PATENTS ..... Respondent
Through: Mr. Manish Mohan, CGSC with Mr.
Devendra Kumar, Ms. Manisha
Saroha, Advocates (M:9999910115)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present petition has been preferred by the Petitioner challenging
the Office Circular No. 2 of 2010, dated 12th January, 2010 (hereinafter,
"Impugned Circular") issued by the Controller General of Patents, Designs
and Trade Marks. The Petitioner herein regularly files patent applications for
gene sequences before the Indian Patent Office. For the said purpose, the
Petitioner was liable to pay official fee on the basis of the total number of
pages in the application, including sequence listings, which run into
thousands of pages. The Impugned Circular under challenge is set out
below:
"In order to clarify the position regarding Filing of
Sequence Listing in Print and Electronic Form, it is
informed to all stakeholders that filing of sequence
listing in Print Form is mandatory as it forms a part
of patent specification. It is also required to file the
sequence listings in Electronic Form for facilitating
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
search as required under Rule 9(1) of the Patents
Rules, 2003 (as amended). If number of pages of the
patent specification including sequence listing in
print form exceeds thirty, extra fee will be charged as
per provisions made in the First Schedule of the
Patent Rules."
3. As per the Impugned Circular, the amount of official fee payable has
been prescribed under the First Schedule of the Patent Rules, 2003. At the
time when the present writ petition was filed, the said Schedule stipulated as
under:
4. In effect, the challenge is to the high amount of official fees payable
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
by Applicants in patent applications relating to gene sequences where the
sequence can run into thousands of pages as the fees is calculated on a per
page basis.
5. The background of the present petition is that the Petitioner filed three
PCT applications being PCT/US2005/017700, PCT/US2010/055669, and
PCT/US2010/055751 for three separate gene sequences. Amongst the said
three applications, Patent Application No.PCT/US2005/017700 was carried
into the National Phase in India. However, it is the case of the Petitioner that
the remaining two PCT applications being PCT/US2010/055669, and
PCT/US2010/055751, could not enter the National Phase in India on
account of the exorbitant/prohibitive official fee that was required to be
deposited by the Petitioner with the Respondent-Indian Patent Office.
6. The details of the three PCT applications filed by the Petitioner,
including the total number of pages in each of the applications, are set out
below:
PCT/US2005/017700 [Indian Patent Application
No.6939/DELNP/2006]
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
PCT/US2010/055669
PCT/US2010/055751
7. As per the Impugned Circular read along with the First Schedule of
the Patent Rules, 2003 as it stood prior to amendments, the PCT applications
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
of the Petitioner would have attracted official fee, to the following effect:
PCT/US2010/055669
PCT/US2010/055751
8. Pertinently, as stated in the petition, in the absence of the Impugned
Circular, the Petitioner would have been liable to pay Rs.96,800/- qua
PCT/US2010/055669 and Rs.88,800/- qua PCT/US2010/055751 as filing
fee to the Indian Patent Office. However, in view of the circular, the official
fees payable would have been in lakhs of rupees to obtain patents for the
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
subject gene sequences.
9. It is submitted on behalf of the Petitioner that in the case of patent
applications containing gene sequences, the applications/specifications runs
into thousands of pages in certain cases, owing to the large number of
claims. According to the Petitioner, the official fee which was being
demanded by the Indian Patent Office was completely prohibitive for
Applicants who intend to file patent applications for gene sequences. It is
further submitted that the Petitioner had no remedy even to file an
application under protest on account of the prohibitive fee, and hence, the
Petitioner could not lodge the said two applications.
10. Mr. Choudhry, ld. Counsel for the Petitioner submits that the said fee
structure is also contrary to the PCT Regulation 5.2; Section 707 of the
Administrative Instructions issued under the Patent Cooperation Treaty. The
same reads:
"Rule 5: The Description
5.2 Nucleotide and/or Amino Acid Sequence
Disclosure
(a) Where the international application contains
disclosure of one or more nucleotide and/or amino acid
sequences, the description shall contain a sequence listing
complying with the standard provided for in the
Administrative Instructions and presented as a separate
part of the description in accordance with that standard.
(b) Where the sequence listing part of the description
contains any free text as defined in the standard provided
for in the Administrative Instructions, that free text shall
also appear in the main part of the description in the
language thereof."
XXX XXX XXX
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
Administrative Instructions under the Patent
Cooperation Treaty
Section 707
Calculation of International Filing Fee and Fee
Reduction
(a) Where an international application is filed in
electronic form, the international filing fee shall, subject
to paragraph (a-bis), be calculated on the basis of the
number of sheets that the application would contain if
presented as a print-out complying with the physical
requirements prescribed in Rule 11.
(a-bis) Where a sequence listing is contained in an
international application filed in electronic form, the
calculation of the international filing fee shall not take
into account any sheet of the sequence listing if that listing
is presented as a separate part of the description in
accordance with Rule 5.2(a) and is in the electronic
document format specified in paragraph 40 of Annex C.
(b) Item 4(b) and (c) and (d) of the Schedule of Fees
annexed to the Regulations shall apply to reduce the fees
payable in respect of an international application filed in
electronic form with a receiving Office which has notified
the International Bureau under Section 710(a) that it is
prepared to receive international applications in
electronic form or which has decided to receive such an
application in accordance with Section 703(d)."
11. Hence, the present writ petition was filed seeking quashing of the
Impugned Circular dated 12th January, 2010. The grounds raised for seeking
quashing of the Impugned Circular was that the fee being prohibitive, in
effect, ensures that the Applicants are unable to file patent applications in
respect of gene sequences.
12. Notice was issued in the present petition on 29th May, 2013. During
the pendency of the present petition, the Government of India notified the
Patent (Amendment) Rules, 2016 with effect from 16th May, 2016. By the
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
said amendment, sequence listings were permitted to be filed in digital form
and amendments were also carried out to enable the filing of patent
applications in respect of gene sequences, with reduced official fee by
capping the fee in each of the categories. The said amendment in the First
Schedule is set out hereinbelow:
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
13. Further amendments were carried out in the First Schedule. As on
date, the relevant extract of the First Schedule to the Patent Rules, 2003,
reads as under:
Number On what Number For e-filing For physical filing
of payable of the Natural Other(s), Natural Other(s),
Entry relevant person(s) or alone or with persons(s) alone or
Form Startup(s) or natural or Startup(s) with natural
Small person(s) or or Small person(s) or
entit(y)/(ies) Startup(s) entit(y)/(ies) Startup(s)
or Small or Small
Educational entit(y)/(ies) educational entit(y)/(ies)
institutions(s) or institution(s) or
educational educational
institution(s) institution(s)
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
Rupees Rupees Rupees Rupees
1. On 1 1600 8000 1750 8800
application Multiple of Multiple of Multiple of Multiple of
for a patent 1600 in case 8000 in case 1750 in case 8800 in case
under sections of every of every of every of every
7, 54 or 135 multiple multiple multiple multiple
and rule 20(1) priority. priority. priority. priority.
accompanied (i) 160 (i) 800 (i) 180 (i) 880
by provisional
or complete
specification-
(i) for each
sheet of
specification
in addition to
30, excluding
sequence
listing of
nucleotides
and/or amino
acid
sequences
under sub-
rule (3) of
rule (9);
(ii) for each (ii) 320 (ii) 1600 (ii) 350 (ii) 1750
claim in
addition to
10:
(iii) for each (iii) 160 (iii)800 Not allowed Not allowed
page of subject to a subject to a
sequence maximum of maximum of
listing of 24000 120000
nucleotides
and/or amino
acid
sequences
under sub-
rule (3) of
rule (9).
2. On filing 2 No fee No fee No fee No fee
complete
specification
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
after
provisional up
to 30 pages
having up to
10 claims -
(i) for each (i) 160 (i) 800 (i) 180 (i) 880
sheet of
specification
in addition to
30, excluding
sequence
listing of
nucleotides
and/ or amino
acid
sequences
under sub-
rule (3) of
rule (9);
(ii) for each (ii) 320 (ii) 1600 (ii) 350 (ii) 1800
claim in
addition to
(iii) for each (iii) 160 (iii) 800 Not allowed Not allowed
page of subject to a subject to a
sequence maximum of maximum of
listing of 24000 120000
nucleotides
and/or amino
acid
sequences
under sub-
rule (3) of
rule (9).
14. With the above amendments coming into effect, the prohibitive nature
of the official fee for sequence listings was sought to be rationalized. Upon
the Patent (Amendment) Rules, 2016 being notified with effect from 16th
May, 2016, the Petitioner filed an application seeking amendment of the
present petition and sought to add a further prayer for the two applications
being PCT/US2010/055669 and PCT/US2010/055751, which could not
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
enter into the National Phase in India, to be permitted to be taken on record
with the same original priority dates. On the said issue, the matter has been
heard from time to time. The prayer clause as contained in the amended
petition is extracted below:
"(a) Issue a writ of mandamus, certiorari or any
other appropriate writ, order or direction in the
nature thereof for quashing / setting aside the
impugned circular dated January 12, 2010 issued by
Respondent 2; and
(b) Direct the respondents to take on record patent
applications PCT/US2010/055669 and
PCT/US2010/055751 with the same original priority;
(c) PASS such other and further orders as may be
deemed fit and proper in the facts and circumstances
of the case."
15. Ld. Counsel for the Petitioner submits that the Petitioner has suffered
immensely due to the prohibitive fee which was liable to be paid by the
Petitioner. Further, the Petitioner found it to be completely uneconomical to
pay the official fee for the remaining two applications being
PCT/US2010/055669 and PCT/US2010/055751, as was prevalent at that
time. Though the fee was subsequently rationalized, the Petitioner was
unable to obtain any benefit on account of the reduction in the fee, by virtue
of the said amendment. He, thus, prays that the two applications be
permitted to be now lodged in the Indian Patent Office with the official fee
applicable as of date.
16. Mr. Manish Mohan, ld. CGSC submits that since the two said
applications were not filed in the Indian Patent Office, the Petitioner cannot
pray for retrospective application of the reduced official fee. As per the
Respondent, the said two patent applications having not being filed in the
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
Indian Patent Office cannot be directed to taken on record now.
17. Heard ld. Counsels for the parties. The present is a case which has
clearly demonstrated how the filing of a writ petition has had a positive
impact on highlighting a major issue in respect of official fee for patent
applications for gene sequences. At the time when the First Schedule to the
Patent Rules, 2003 may have been originally enacted, there was no separate
official fee which was prescribed in respect of gene sequences. The sheer
quantum of pages in patent applications for gene sequences may not even
have been in contemplation at the time when the official fee was originally
fixed. The present writ petition highlighted this fact before the Government
of India, and thereafter, the Patent (Amendment) Rules, 2016 have been
notified, wherein the fee structure has been rationalised.
18. The Petitioner now seeks the benefit of the said reduced fee in order
to file its own two PCT applications in the National Phase, which it was
unable to file earlier owing to the prohibitive official fee. Though this Court
sympathises with the Petitioner's cause, the impact of non-filing of a
National Phase application is much wider.
19. In terms of Rule 20(3)(a) read with 20(4)(i) of the Patent Rules, 2003,
once a PCT application is filed, the maximum time limit, during which the
Applicant in respect of an international application designating India, can
pay the prescribed national fee and other fees to the Patent Office, is thirty
one months. The said Rule is set out below:
"20. International applications designating or
designating and electing India.- (1) An application
corresponding to an international application filed
under Patent Cooperation Treaty may be made in Form
1 under sub-section (1A) of section 7.
Explanation - For the purpose of this rule, "an
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
application corresponding to an international
application" means an international application as
filed under Patent Cooperation Treaty which includes
any amendments made by the applicant under Article
19 and communicated to Designated Office under
Article 20 or any amendment made under sub-clause
(b) of clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such
application corresponding to an international
application designating India, may delete a claim, in
accordance with the provisions contained in rule 14.]
(2) The Patent Office shall not commence
processing of an application filed corresponding to
international application designating India before the
expiration of the time limit prescribed under [sub-rule
(4)(i)].
(3) An applicant in respect of an international
application designating India shall, before the time
limit prescribed in [sub-rule (4)(i)],-
(a) pay the prescribed national fee and other fees to
the patent office in the manner prescribed
under these rules and under the regulations
made under the Treaty;
(b) and where the international application was
either not filed or has not been published in
English, file with the patent office, a translation
of the application in English, duly verified by the
applicant [or the person duly authorised by him]
that the contents thereof are correct and
complete.
[(4) (i) The time limit referred to in sub-rule (2) shall
be thirty one months from the priority date as referred
to in Article 2(xi);
(ii) Notwithstanding anything contained in clause (i),
the Patent Office may, on the express request filed in
Form 18 along with the fee specified in First Schedule,
process or examine the application at any time before
thirty one months.]
(5) The translation of the international application
referred to in sub-rule (3) shall include a translation in
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
English of, -
(i) the description;
(ii) the claims as filed;
(iii) any text matter of the drawings;
(iv) the abstract; and
(v) in case the applicant has not elected India and if
the claims have been amended under Article 19,
then the amended claims together with any
statement filed under the said Article;
(vi) in case the applicant has elected India and any
amendments to the description, the claims and
text matter of the drawings that are annexed to
the international preliminary examination
report.
(6) If the applicant fails to file a translation of the
amended claims and annexures referred to in sub-rule
(5), even after invitation from the appropriate office to
do so, within a time limit as may be fixed by that office
having regard to the time left for meeting the
requirements, the amended claims and annexures shall
be disregarded in the course of further processing the
application by the appropriate office.
(7) The applicant in respect of an international
application designating India shall when complying with
sub-rule (3), preferably use Forms set out in the Second
Schedule before the appropriate office as designated
office."
20. Further, Rule 22 of the Patent Rules, 2003 provides the consequence
of non-compliance with the requirements as set out in Rule 20. The said
Rule 22 reads as under:
"22. Effect of non-compliance with certain
requirements - An international application
designating India shall be deemed to be withdrawn if
the applicant does not comply with the requirements of
rule 20."
21. When a PCT application does not enter the National Phase in India
within the prescribed time limit, the subject matter of the said application
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
having been published internationally, would fall into public domain. The
consequences of accepting the prayer of the Petitioner would, in effect, be
that the subject matter of the two applications of the Petitioner which did not
enter the National Phase in India may have fallen into public domain, which
would have to be reversed. The same would be impermissible. While being
successful in its endeavour to highlight the prohibitive nature of the official
fee that was earlier prevalent, the Petitioner has been unable to enter the
National Phase in India in respect of two of its applications being
PCT/US2010/055669 and PCT/US2010/055751, the deadline for filing in
India in respect of which is stated to be 6th June, 2012, as per the petition.
22. The newly amended reduced official fee having been notified under
the Patent (Amendment) Rules, 2016 with effect from 16th May, 2016
without any retrospective effect, cannot be retrospectively applied by this
Court to give benefit to the Petitioner. The said two patent applications can
no longer be filed in India, due to the prevalent facts and circumstances, as
also, the applicable official fee which could not be paid by the Petitioner
within the prescribed time limit. The Petitioner always had the option of
approaching the Court within the time period prescribed seeking waiver of
official fees or could have deposited the official fees under protest and
sought refund later. However, the Petitioner chose to file only one of the
three PCT applications with the prevalent official fees, which was thus a
conscious decision.
23. In the opinion of this Court, the fixing of fee for patent applications
being a right vested in the Government, no retrospective benefit having been
given in the amendment of 2016, the Court cannot, give benefit to the
Petitioner to file its patent applications with the reduced fee applicable as on
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
date. The said patent applications being PCT/US2010/055669 and
PCT/US2010/055751, having not entered the National Phase in India, the
relief as sought in the clause (b) of the prayer clause of the amended
petition, is not tenable, and is not liable to be granted.
24. Insofar as the Impugned Circular is concerned, the fee having now
been rationalised by the Government of India itself, the said prayer as sought
in the clause (a) of the prayer clause of the amended petition no longer
survives and has become infructuous.
25. Accordingly, the present petition is disposed of in the above terms.
All pending applications are also disposed of.
PRATHIBA M. SINGH
JUDGE
MAY 23, 2022/aman/AD
(corrected & released on 28th May, 2022)
Signature Not Verified
Digitally Signed
By:DEVANSHU
JOSHI
