Patent Cooperation Treaty National Phase Entry in India: 31 months Period: Effect of Patent (Amendment) Rules, 2016

Under Patent Cooperation Treaty (PCT), applicant gets varying period of 30-34 months to enter different states with National Phase applications. In the case of India, this period is 31 months. Decisions have been given by Hon’ble High Courts of India regarding extendible or non-extendible nature of this period of 31 months.

In the case of NOKIA CORPORATION VS DEPUTY CONTROLLER OF PATENTS AND DESIGNS decided by Hon’ble MADRAS HC, Indian application was filed as National Phase Entry on August 18, 2009 claiming a priority from an earlier US application 11/622, 147 dated January 11, 2007. Indian Patent Office rejected to accept the patent application by resorting to rule 20 (3) of the Patents Rules, 2003 which mandates to file Indian National Phase Application within 31 months from the priority date which in the current case was August 11, 2009. After returning the documents to attorneys on August 21, 2009, online application was filed on September 10, 2009, which was accorded application No. 5322/CHENP/2009. Along with patent application, petitions under Rule 137 and 138 for condoning the delay in filing National Phase application were also filed, and also request for personal hearing was made. According to the petitioner, National Phase application could be filed within 31 months, along with the request for one month extension of time, under Rule 138, if necessary petition under Rule 137 for Condonation of irregularity was filed before expiry of prescribed period of one month. Patent office rejected to condone the delay by holding that it will be detrimental to public at large. Madras HC held that in case, an application is moved for extension of time by one month or shorter period, it is required to be decided on merit by taking into consideration facts and circumstances of each case. Court went on to stay that it is the discretion of the Controller to extend the period on facts and circumstances of the case, but it was not correct on the part of the Deputy Controller to have rejected the application, by treating it to be not maintainable, as having been filed after expiry of prescribed time under rule 20 of the Patents Rules 2003. In short, court declared that that if applicant shows sufficient cause for the delay, national phase application could be filed within 32 months from the priority date.

After this decision, two different cases related to 31 months were decided by Hon’ble Delhi HC.

In the case of 5402/DELNP/2011, reason for missing timeline of 31 months was mentioned by agents as the non-receipt of the instructing emails due to limitations of the agent’s IT systems in place at that time. Petitions under rule 137 and rule 138 were filed for condoning the delay, obviating the irregularity and extending the deadlines to complete the procedures.

The petitions were rejected by controller for below reasons:

Reasons for rejecting petition under rule 137:

1. Condonation can’t be allowed to result in detriment to the interest of any person.
2. Provisions were applicable to amendments only and not for condoning the delay in filing National Phase application.

Reason for rejecting petition under rule 138:

1. Application for extension was not made before expiry of prescribed period of time.

Controller decided that condoning the delay would be to the detriment of the public and by resorting to rule 22, Patent Rules, 2003, held that subject matter of the patent application had fallen in the public domain.

Controller also held that the delay in the current case was unintentional, hence articles 48 of the PCT was not attracted as it allows condonation of delay in the case of unavoidable loss or delay in mail and not in the case of unintentional delay.

In the case of 1494/DELNP/2010, reason for not meeting deadline of 31 months was mentioned as docketing error on the part of US Attorney. Petitions under rule 137 and 138 were filed even in this case. In this case also, controller rejected to accept the patent application after the expiry of 31 months and held that subject matter had fallen in the public domain. Controller cited similar grounds as that of the 5402/DELNP/2011 case.

In both cases i.e. 5402/DELNP/2011 and 1494/DELNP/2010, Hon’ble Delhi High Court chose not to rely on the earlier Madras High Court decision and instead relied on Nippon case decided by Delhi HC which had strictly interpreted provisions related to 48 months period during which request for examination is to be filed. Delhi high court declared that in case of the application for which this deadline is missed, application is to be treated as withdrawn and not existent in the law and no amendment of priority date should be allowed in case of such application. Though Nokia case was specific to 31 months period, case was not relied upon in these two cases as it was older than Nippon case, and was decided by Madras court against the latter which was decided by Delhi High Court within jurisdiction of Delhi IPO falls.

Before introduction of the 2016 amendment rules, the picture was unclear as practices of different high courts were different and much was dependent on the discretion of the controller. Now with the 2016 amendment of rule 138 of the Patent Rules, 2016, possible of extension of 31 months time period has been expressly barred. Rule 138 gives list of timelines in case which, extension cannot be sought. Before amendment, this section was not listing period of 31 months time period as one the non-extendible timelines but now includes the same.

With this change, applicant and their agents are required to docket the applications with more care.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: [email protected].