24 July 2017

Examination of national phase patent application filed after specified period


In recent judgment of 10th July 2017, the Delhi High Court in the case of the Trytan Medical INC. vs. Union of India, has taken to task, the Patent Office, for its failure to adhere to the orders and direction of a Superior Court/ Tribunal. In this case the High Court has directed the Patent Office to comply with the earlier direction of the Intellectual Property Appeal Board (IPAB), to examine the national phase application filed in India after the 31-month period had lapsed.



The patent applicant in this case had filed its national phase application in India, 8 days after the stipulated period of 31 month. This application was filed along with an application under Rule 138 of the Patent Rule, 2003 seeking condonation of the delay. The Patent Office rejected the request of the patent applicant and consequently, the patent applicant lost its ability to obtain a patent in India for the invention.

On appeal to the IPAB, on 24th March, 2015, the matter was remanded back to the Patent Office for reconsideration with direction to Patent Office to consider the patent applicant’s request for examination, after providing of opportunities of hearing and in accordance with law.

The patent applicant was thereafter heard and the Patent Office nevertheless rejected the application as being time barred in view of Rule 22 of the Patent Rules, 2003. The Patent Office held that under Rule 22, if the national phase application is not filed within the stipulated period of 31 months the same was deemed to be withdrawn. This order was passed on 19th January, 2016.

The patent applicant once again appealed to the IPAB and in an order dated 7th March 2016, the IPAB reprimanded the Patent Office for deliberately misreading and misinterpreting its earlier order. The IPAB reiterated that the controller could not have rejected the relief sought by the patent applicant for extension of time and clarified that by its earlier order, the IPAB had already condoned the delay of 8 days and had directed the Patent Office to examine the patent application – it was not a remand to determine the issue of condonation of delay, but it was a remand directing the Patent Office to examine the patent application on merits. Accordingly, the Patent Office was once again directed to examine the application on merits and disposed of the patent application in an expedited manner.

The patent applicant had approached the High Court because the Patent Office continued to refuse to examine the patent application on merits. The High Court held that even if the Patent Office disagreed with the decision of the IPAB it is not open for them to ignore and violate the order passed by the IPAB. Until the time the IPAB order in question is appealed and set aside or stayed by a Court of competent jurisdiction, the Patent Office is bound by IPAB orders.



The High Court, therefore, directed the Patent Office to examine the patent application on merits. The High Court’s judgment contains a very clear finding that the Patent Office is bound by IPAB judgment and in principle, the decisions issued by the IPAB clarifying substantive patent law, must also be followed by the Patent Office. This decision would hopefully encourage the Patent Office to consistently adhere to precedents from the IPAB, which, alas, is not the consistent practice today. In terms of underlying issue, i.e., the filing of national phase application beyond 31 months, the amendments to Rule 138 in 2016 has put the matter to rest – it is not possible any more to seek any extension after the expiry of the 31 months period.  


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