Madras High Court
Dated: 28.11.2023 vs Controller General Of Patents on 28 November, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2023:MHC:5258
(T)CMA(PT)/61/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 28.11.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(PT)/61/2023
(OA/11/2021/PT/CHN)
SELFDOT TECHNOLOGIES (OPC) PVT. LTD.
C-102, Silver Akruthi,
27th main, Sector-2, HSR Layout,
Bangalore-560 102,
Karnataka, India. ... Appellant
v.
Controller General of Patents, Designs & Trade Marks,
Patent Office Intellectual Property Building,
GST Road, Guindy,
Chennai - 600 032. ...
Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
Section 117-A read with Section 15 of the Patents Act, 1970, praying to the
Hon'ble Court to reverse the order of the respondent dated 06.10.2020
issued in the matter of Patent Application No.201843023004 and grant the
patent in favour of the appellant.
For Appellant : Mr.Ramesh Ganapathy
1/21
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for M/s.Kartik Puttaiah,Hemanth Puttaiah
For Respondent : Mr.M.Karthikeyan, SPC
JUDGMENT
The appellant challenges an order dated 06.10.2020 rejecting
Patent Application No.201843023004 on the ground of contravention of
Section 39 of the Patents Act, 1970 (the Patents Act). The appellant
admittedly first filed Patent Application No.2822/CHE/2014 in the Indian
Patent Office in respect of the parent invention. Thereafter, the parent
application was filed as a PCT application and the patent was granted by the
US Patent Office under US Patent No.10,074,228 B2 on 11.09.2018. When
the appellant decided to file an application for a patent of addition, such
application was first filed in the US Patent Office without applying for and
obtaining permission under Section 39 of the Patents Act. After obtaining
the US patent under US Patent No.10,467,840 B2 on 05.11.2019 for the
Continuation-in-Part (CIP), which is equivalent to a patent of addition under
Indian law, the present application was filed before the Indian Patent Office.
On the ground that the patent applicant contravened Section 39 of the
Patents Act, the application was deemed to be abandoned under Section 40
thereof. The present appeal arises under the above mentioned facts and
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circumstances.
2. Learned counsel for the appellant invited my attention to
Section 39 of the Patents Act. He pointed out that this Section was amended
by the Patents (Amendment) Act, 2005 (the 2005 Amendment Act). As it
stood prior to such amendment, learned counsel pointed out that permission
under Section 39 was required only if the invention was relevant for defence
purposes or related to atomic energy. By virtue of the amendment, the scope
of Section 39 was expanded to include all applications outside India for
grant of patent by a person resident in India. By focusing attention on the
expression “an invention” in sub-section (1) of Section 39, learned counsel
submitted that the same expression finds place in sub-section (1) of Section
54 of the Patents Act, which deals with patents of addition. Therefore,
learned counsel contended that Section 39 is not applicable because the
parent was first filed in India. In this regard, he also pointed out that the
parent invention relates to automated verification of a security label and that
the patent of addition relates to a method for automated authentication of
such security label. Learned counsel also submitted that Section 40 of the
Patents Act originally imposed the liability of deemed abandonment of a
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patent application or revocation of patent only for contravention of
directions related to secrecy under Section 35, and that the provision was
amended by Act 38 of 2002 to cover a contravention of Section 39. By
pointing out that Section 39 only covered inventions relevant for defence
purposes or related to atomic energy at that point of time, learned counsel
submits that the alleged technical breach is not a contravention as per
Section 40.
3. By referring to the judgment of the Delhi High Court in
European Union represented by the European Commission v. Union of
India and others, (2022) SCC OnLine Del 1793, particularly paragraphs 58
to 63 thereof, learned counsel submits that the Delhi High Court recognised
that the consequences of deemed abandonment of a patent application are
drastic and that such consequences should not be visited on an applicant
when it is clear from the facts and circumstances that the applicant
concerned did not intend to abandon the application. By referring to
paragraph 63 of the judgment, learned counsel also pointed out that the
Delhi High Court took note of the 161 st report titled “Review of the
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Intellectual Property Rights Regime in India” of the Department Related
Parliamentary Standing Committee on Commerce, and that the Committee
had observed that flexibility should be incorporated in the Act to make
allowances for minor errors and lapses so as to prevent outright rejection of
patents. He also referred to the judgment of the Supreme Court in Sugandhi
(dead) by legal representatives and another v. P.Rajkumar represented by
his Power Agent Imam Oli, (2020) 10 SCC 706, where, at paragraph 9, the
Supreme Court emphasised that procedure is the handmaid of justice and
that procedural and technical hurdles should not be allowed to come in the
way of the Court doing substantial justice.
4. In response to these contentions, learned counsel for the
respondent submitted that the mandate of Section 39 of the Patents Act is
clear and that it does not admit of any exception for a patent of addition. He
also pointed out that the priority date as regards the application for the
patent of addition is the date specified in the application filed before the US
Patent Office. Learned counsel referred to the proviso to Section 55 of the
Patents Act and pointed out that a patent of addition would survive even if
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the patent relating to the parent invention is revoked. Since a patent of
addition, therefore, has an existence independent of the parent invention,
learned counsel submitted that the requirement of obtaining prior permission
under Section 39 would extend to a patent of addition.
5. From the contentions advanced by the parties, it is evident
that the facts are undisputed. The respondent admits and acknowledges that
the appellant applied for a patent in respect of the parent invention in India
before applying outside India. From the claims relating to the parent patent,
it is evident that it is an invention relating to the method for determining
authenticity or tampering of a security label and the method of recording
colour profiling in relation thereto. This invention was granted a patent both
by the US Patent Office and the Indian Patent Office. The complete
specification in respect of the patent of addition is also on record. This
document discloses that the patent of addition relates to a method for an
automated authentication of the security label. The US Patent Office granted
a patent for the patent of addition. Thus, both the parent invention and the
claimed patent of addition are not relevant for defence purposes or related to
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atomic energy. The claimed patent of addition is undoubtedly ancillary to
the parent invention. On account of the relevant facts being admitted, the
case turns on the interpretation of the applicable provisions of the Patents
Act.
6. Section 39, which is one of the provisions at the heart of this
dispute, is set out below:
“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
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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.”
Prior to amendment by the 2005 Amendment Act, Section 39 was restricted
in scope to applications outside India for the grant of patent for an invention
relevant for defence purposes or related to atomic energy. By virtue of the
amendment, the provision has been made applicable to inventions in all
fields, provided the applicant for the grant of patent is a resident of India. On
the facts of this case, it is undisputed that the appellant/applicant is a
resident of India. The operative portion of sub-section (1) of Section 39
restrains a person resident in India from making an application outside India
for grant of patent for an invention without obtaining a written permit from
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the Controller. Clauses (a) and (b) of sub-section (1) carve out exceptions,
but such exceptions are admittedly inapplicable to the present case. On
closely examining Section 39, the provision does not expressly refer to either
patents of addition or to divisional applications. The first question that,
therefore, arises is whether the expression “any application for the grant of a
patent for an invention” in sub-section (1) of Section 39 would apply to a
patent of addition.
7. The respondent does not dispute that the appellant first
applied for a patent in India in respect of the parent invention. The appellant
asserts that it was under the impression that the filing of the parent
application in India before it was filed outside India obviates the requirement
of applying for permission as regards the patent of addition. In the impugned
order, the respondent examined Section 39 of the Patents Act. Thereafter,
the respondent considered the case of a divisional application and
differentiated a divisional application from a patent of addition by holding as
under:
“In case of filing of divisional applications,
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subject matter of divisional application is already fully
disclosed in parent application. Therefore when
permission is granted for filing of parent application it
covers permission to all disclosed subject matter of that
parent application. If that parent application discloses
about multiple inventions then permission also covers all
the disclosed multiple invention.
But in case of patent of addition application,
additional subject matter is disclosed over the parent
(main) application and hence the subject matter in patent
of addition application is not fully disclosed by the
parent/main application. Therefore, permission granted
for parent/main application does not cover the
permission for patent of addition application. Patent
agent stated that CIP (continuation-in-part) application
is same as Patent of addition application.”
8. From the above extract, it is evident that the respondent
concluded that permission under Section 39 would not be required if a
divisional application were to be filed by a person resident in India after
having first filed the application for the parent invention in India. The
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reasoning supporting such conclusion is that a divisional application can
only be filed in respect of matters disclosed in the complete specification of
the parent application. The respondent also concluded that a patent of
addition stands on a different footing because additional matter may be
disclosed in the complete specification relating thereto.
9. Nevertheless, the discussion and reasoning of the respondent
underscores that there is ambiguity in Section 39 of the Patents Act, and that
interpretation thereof is necessary to determine whether it applies to patents
of addition and divisional applications pursuant to the first filing of the
application for the parent invention in India. The appellant stated that it was
of the bona fide opinion that approval was not required for filing the
application for the patent of addition because the application in respect of
the parent invention was first filed in India. In order to determine whether
the above assertion is credible, it becomes necessary to examine the
provisions relating to patents of addition.
10. Sections 54 - 56 of the Patents Act, which deal with patents
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of addition, are set out below:
“54. Patents of addition.-(1) Subject to the provisions
contained in this section, where an application is made
for a patent in respect of any improvement in or
modification of an invention described or disclosed in
the complete specification filed therefor (in this Act
referred to as the “main invention”) and the applicant
also applies or has applied for a patent for that
invention or is the patentee in respect thereof, the
Controller may, if the applicant so requests, grant the
patent for the improvement or modification as a patent of
addition.
(2) Subject to the provisions contained in this
section, where an invention being an improvement in or
modification of another invention, is the subject of an
independent patent and the patentee in respect of that
patent is also the patentee in respect of the main
invention, the Controller may, if the patentee so
requests, by order, revoke the patent for the
improvement of modification and grant to the patentee a
patent of addition in respect thereof, bearing the same
date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of
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addition unless the date of filing of the application was
the same as or later than the date of filing of the
application in respect of the main invention.
(4) A patent of addition shall not be granted
before grant of the patent for the main invention.
55.Term of patents of addition-(1) A patent of addition
shall be granted for a term equal to that of the patent for
the main invention, or so much thereof as has not
expired, and shall remain in force during that term or
until the previous cesser of the patent for the main
invention and no longer:
Provided that if the patent for the main invention is
revoked under this Act, the Court, or, as the case may
be, the Controller, on request made to him by the
patentee in the prescribed manner, may order that the
patent of addition shall become an independent patent
for the remainder of the term for the patent for the main
invention and thereupon the patent shall continue in
force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of
a patent of addition, but, if any such patent becomes an
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independent patent under sub-section (1), the same fees
shall thereafter become payable, upon the same dates, as
if the patent had been originally granted as an
independent patent.
56.Validity of patents of addition- (1) The grant of a
patent of addition shall not be refused, and a patent
granted as a patent of addition shall not be revoked or
invalidated, on the ground only that the invention
claimed in the complete specification does not involve
any inventive step having regard to any publication or
use of-
(a) the main invention described in the complete
specification relating thereto; or
(b) any improvement in or modification of the
main invention described in the complete specification of
a patent of addition to the patent for the main invention
or of an application for such a patent of addition,
and the validity of a patent of addition shall not be
questioned on the ground that the invention ought to
have been subject of an independent patent.
(2) For the removal of doubts, it is hereby
declared that in determining the novelty of the invention
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claimed in the complete specification filed in pursuance
of an application for a patent of addition regard shall be
had also to the complete specification in which the main
invention is described.”
11. The provisions relating to a patent of addition indicate that
a patent of addition is linked to the parent or main invention in multiple
ways. By way of illustration, the application for grant of a patent of addition
cannot be filed earlier than the date of filing of the application for grant of
patent for the main invention; it cannot be granted before grant of the patent
for the main invention; the term of the patent of addition shall not exceed
that of the main invention, even if granted later than the main invention; and
the complete specification of the main invention shall be taken into account
to determine novelty of the claim for a patent of addition. By taking into
account the statutory prescription relating to a patent of addition, the nature
of the parent invention and the claimed patent of addition and, most
importantly, the admitted position that the application for grant of patent for
the parent invention was first filed in India, I conclude that the appellant did
not intend to circumvent the requirements of Section 39 and that there is
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credibility in the assertion of bona fide belief that permission under Section
39 was not necessary.
12. Notwithstanding such strong links, both sub-sections (1)
and (2) of Section 54 and the proviso to sub-section (1) of Section 55
indicate that the invention forming the subject of a patent of addition is
capable of being patented independently. The nature of a patent of addition,
i.e. involving an improvement in or modification of the parent or main
invention, would invariably require additional disclosures to those contained
in the complete specification of the main invention. Therefore, I conclude
that the the reasoning of the respondent in the impugned order in support of
the conclusion that a patent of addition stands on a different footing from a
divisional application is sound and cannot be faulted. Whether the omission
of the appellant falls within the scope of the expression “contravention of
Section 39” in Section 40 remains to be considered.
13. Section 40 is set out below:
“40. Liability for contravention of section 35 or section
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Without prejudice to the provisions contained in Chapter
XX, if in respect of an application for a patent any
person contravenes any direction as to secrecy given by
the Controller under section 35 or makes or causes to be
made an application for grant of a patent outside India
in contravention of section 39, the application for patent
under this Act shall be deemed to have been abandoned
and the patent granted, if any, shall be liable to be
revoked under section 64.”
Section 40 provides that an application for grant of patent outside India, if
made in contravention of Section 39, would result in the application for
patent under this Act being deemed to be abandoned. It also provides that
the patent, if granted in those circumstances, shall be liable to be revoked
under Section 64. Originally, Section 40 only applied to a contravention of
directions as to secrecy under Section 35. Under Act 38 of 2002, it was
extended to a contravention of Section 39. At that time, the scope of Section
39 was limited to inventions relevant for defence purposes or related to
atomic energy. Later, when the scope of Section 39 was expanded, this
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provision was not amended. The conclusion that emerges is that the words
“contravention of Section 39” in Section 40 are intended to apply to
situations where there was a clear breach of the written permit requirement
in respect of inventions in all fields, including, in the specific context of
inventions relevant for defence purposes or atomic energy, the requirement
of prior consent of the Central Government. Because Section 40 deals with
substantive infractions of Section 39, by legal fiction, drastic consequences
for such infractions are prescribed.
14. A legal fiction, such as the fiction incorporated in Section
40, is intended to serve a particular purpose. In this case, the purpose is to
prescribe the consequences of a clear breach of Section 39, as opposed to
procedural irregularities, and the scope thereof should not be extended
beyond such purpose. For this settled proposition, it is sufficient to refer to
Bengal Immunity Company Limited v. State of Bihar, 1955 SCC OnLine
SC 2 and Mancheri Puthusseri Ahmed v. Kuthiravattam Estate Receiver,
(1996) 6 SCC 185. The triggering event for the application of the legal
fiction of deemed abandonment in Section 40 is the contravention of Section
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39. In the facts and circumstances outlined above, the breach committed by
the appellant would, at worst, qualify as a technical breach but would not
trigger the deemed abandonment under Section 40 of the Patents Act.
15. For reasons set out above, the impugned order is set aside.
Consequently, the matter is remanded for reconsideration of Patent
Application No. 201843023004. It is open to the Controller to impose terms
on the appellant in respect of the procedural violation by taking recourse to
Rule 137 of the Patents Rules 2003 or any other applicable provision. After
providing a reasonable opportunity to the appellant, the application for a
patent of addition shall be disposed of on merits within a period of four
months from the date of receipt of a copy of this order.
16. (T)CMA(PT)/61/2023 is disposed of on the above terms without
any order as to costs.
28.11.2023
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Index : Yes / No
Internet : Yes / No
Neutral Citation : Yes / No
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SENTHILKUMAR RAMAMOORTHY,J
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(T)CMA(PT)/61/2023
(OA/11/2021/PT/CHN)
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/61/2023
28.11.2023
https://www.mhc.tn.gov.in/judis
