Wednesday, 8 February 2012

Conflicting guidelines between PCT and Indian Patent Act 1970, read with Patent Rules, 2003?


I came across two recent IPO decisions (And there are plenty of these) where the applicant failed to file the “Request for Examination” (form 18) within the prescribed time limit. As you are all aware, an applicant has to file a request for examination with the patent office in India for getting the patent application examined. If the applicant fails to file the request for examination, then the patent application is not examined and is deemed to be withdrawn by the applicant.

The patent application numbers are 3775/DELNP/2010 and 7318/DELNP/2008 and correspond to national phase applications for their international applications. The background information of 3775/DELNP/2010 is provided below. The same parallel can be drawn for the 7318/DELNP/2008 application as it is almost an identical case. (The patent agent is also same in both the cases).

The 3775/DELNP/2010  was filed as National Phase Application on 28/05/2010  and is based on International Patent application PCT/US2008/082149 dated 31/10/2008 which in turn claims priority from US application number 60/984260 having earliest priority date of 31/10/2007. The 3775/DELNP/2010 was published in Indian Journal no. 45/2011 on 11/11/2011. The agent for 3775/DELNP/2010 submitted the request for examination on 07/12/2011. The request for examination was refused by the patent office as the due date expired on 31/10/2011 in accordance with Rule 24B(1)(i) of the patents rule 2003.

The issue to address is “Should the applicant look for information on WIPO website only for further processing of patent application under national phase”?

Why did the problem arise? 

The confusion with respect to the due date was primarily because of two reasons, namely, changes in the WIPO guidelines (not the major reason) and failure on applicant’s part to appropriately read and interpret the information present on the WIPO site while completely ignoring to cross check with the official website of the Indian Patent office.
PCT guidelines, as on 14/01/2010 treated the period of filing the RFE (Form 18) as 48 months from date of filing of application in India. I have reproduced the previous version of the guideline below:
“A patent application shall not be examined unless the applicant makes a RFE in the prescribed manner within 48 months from the date of priority or from the date of filing of the patent application, whichever is later.
The PCT guidelines were updated on 10/11/2011 to treat the period of filing RFE as 48 months from the date of priority of the application or from the date of filing of application, whichever is earlier.

While deciding the case, the deputy controller observed that the patent office issues as Application Filing Receipt (AFR) to the applicant when a patent application is filed in India. The timeline in this receipt under note 4 clearly indicates that “if you wish to get you application examined, you should file a request for examination in Form 18 within 48 months from the date of priority or date of filing, whichever is earlier”.  The deputy controller argued that it was the foremost duty of the patent agent to go through the AFR and take note of the same. Further, it was important for the patent agent to access the website of Indian patent office which has summarized the list of all amendments and includes the latest version of all the changes. Moreover, the deputy controller states that the information on WIPO site is merely informative in nature and can be considered as mandatory is information regarding international phase and NOT national phase.

Conclusion: Based on all the above arguments, the request for examination has been refused and the patent application has been deemed as withdrawn by the applicant. Thankfully, WIPO has updated the guidelines on its website and has now cited the relevant sections of each patent office for various phases associated with the national phase of an application. Nonetheless, this case shows how tricky the patent laws can be and why it is imperative for keeping oneself abreast with the amendments.   

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