This post deals with a recent application that was filed at the IPAB and highlights the importance of timely communication on all matters at the patent office. The journey of a patent application from filing to its grant is time bound. Every action comes with a deadline and failures to meet the deadlines have their own consequences. This is what happened when a patentee was not informed about the grant of his patent by the patent office and the patentee subsequently filed for amendments in the patent application. Thus, the question that needs to be answered is whether the amendments that were filed by the patentee (without having information on the grant of his patent) correspond to amendments for the pre-grant application or for the post-grant application?
B. Braun Melsungen AG, a German medical and pharmaceutical company, had filed an application (1857/MAS/1998) for a patent titled “AN I. V. CATHETER” on August 18, 1998 at the Indian Patent Office. On May 27, 2005, the agents of the patentee were intimidated that the application was in order to grant but the letters would be issued after the disposal of pre-grant opposition. Form 13 was filed on September 10, 2007 for changing the counsel by the patentee and the counsel was informed on December 19, 2007 that patent has been granted on the application and the grant of patent has been recorded in the Register of Patent Office on December 3, 2007 (Ref: Patent No. 210062 (1857/MAS/1998), dated August 18, 1998 granted on September 17, 2007”).
The situation gets tricky on September 19, 2007 (see image) when the counsel for the patentee filed another Form 13, this time for amending the claims in the patent application. The patentee cancelled all the original 54 claims and replaced the claims with new set of 28 claims. The required payment for form 13 was made on September 21, 2007 because of which the date of filing of form 13 was considered as September 21, 2007. The examiner allowed the amended claims stating that the allowed claims were well within the scope of the claims of the specification before the amendments. What makes matter even more interesting is the fact that the patentee had filed another application under rule 137 and rule 138 for condonation of delay under section 8(1)(b). Section 8(1) (b) deals with the filing date for international application under PCT where India has been designated. Rule 137 and rule 138 deal with specials powers given to the controller on matters where no special provisions are made in the patent act.
Suru International, an Indian company that manufactures syringes, catheter and cannulas, had raised a pre-grant opposition for 1857/MAS/1998 on the grounds that the invention was not novel and that the patentee had not only failed to comply with section 8 (1) (b) but also the fact that the patent office was treating the amendments as pre-grant amendments.
Upon examination of patent records, it was revealed that 1857/MAS/1998 was allotted number 210062 on September 17, 2007. Further, it was revealed that notice of allotment of a patent number to an application under rule 37 of patent rules 2003 is not communicated to the officers at the patent office. Based on the above information, the IPAB has asked the patent office to consider the matter afresh from September 21, 2007. As form 13 was filed after grant of patent, the IPAB has decided that the responses filed after date of grant will be dealt in accordance with provisions on post-grant applications.
The IPAB has gone one step ahead and called for greater transparency and communication at the patent office so that examiners are aware of when Form 13 are filed, when the patent is granted and when the number has been allotted. IPAB also placed importance on the availability of information and requested that once a patent number is allotted, it should be made immediately available on the patent office website so that the patentee’s are well informed about the status of their applications.