ブックタイトル縁19号

概要

縁19号

in order for grant under section 21 as prescribed under subrule (5) may be further extended for a periodof three months on a request in Form 4 for extension of time along with prescribed fee, made to theController before expiry of the period specified under subrule (5).・Rule 138-Power to extend time prescribed(1) Except for the time prescribed in rules 20 (4) (i), 20 (6), 21, 24B (1), 24B (5), 24B (6), 24C (10),24C (11), 55 (4), 80 (1A), 130 (1) and 130 (2), the time prescribed by these rules for doing of any actsor taking any proceedings thereunder may be extended by the Controller for a period of one month,if he thinks it fit to do so and upon such terms as he may direct.(2) Any request for extension of time prescribed by these rules for the doing of any act or the takingof any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.RECENT CASES OF PATENT ABANDONMENT AND ITS IMPLICATIONSIn a very recent judgement the question regarding the condonation of delay in the filing a request forexamination of a patent application was decided by the Hon'ble Delhi High Court in the case of SphaeraPharma, Pte. Ltd. And Anr.Vs Union Of India. W.P.(C) 1469/2018 The Hon'ble Mr. Justice Vibhu Bakhru decidedupon the issue pertaining to the limitation period for the examination of a patent application prescribedunder the Patents Act, 1970 ("Act"). Sphaera Pharma (the Petitioner), claimed that they had developedsome new compounds which were useful in the treatment of cancer. The Petitioner, thereafter, filed apatent application (no.3114/DEl/2012) with the Indian patent office on 05.10.2012. Accordingly, the Petitionerwas also required to file a request for the examination of the patent application within 48 months fromthe date of filing the initial patent application. However, the said request was not uploaded due to sometechnical reasons and as a result the patent application was shown as abandoned under Section 11B of theAct. Thereafter, the Petitioner filed a review petition for its patent application which was not considered bythe Patent Office. The Petitioner, aggrieved by the Patent Office, filed a writ petition before the Hon'ble DelhiHigh Court for the restoration of the Patent application. The Petitioner contented that the Controller ofPatents had the power under Rule 138 of the Patent Rules, 2003 ("Rules") to extend the prescribed timeperiod, for filing a patent examination request, for a period of one month. The Court held that a plain readingof Rule 138 would clearly show that the power of the Patent Controller to extend the prescribed timeperiod under the said Rule does not extend to the time prescribed under Rule 24B as it expressly excludessubrules (1), (5) and (6) of Rule 24B. The court also opined that even if Rule 138 is ignored, no recourse isavailable to the Petitioner under Rule 138 as, according to Rule 138(2), it only applies to the examinationrequests which are made before the expiry of the prescribed time period. In the present case, the Petitionerhad not made any such examination request within 48 months from the date of filing of the Patent application.Thereafter, the Court took reference to a previous judgement in the case of Nippon Steel Corporationv. Union of India 2011 (46) PTC 122 (Del)., wherein the court ruled that a delay in filing a Request forExamination (RFE) could not be condoned under any circumstance. The relevant excerpt of the judgementis below: "The provisions of the Act and the Rules have to expressly reflect the legislative intent to permitrelaxation of time limits, absent which such relaxation cannot be read into' the provisions by a High Courtexercising powers under Article 226 of the Constitution. In other words, it is not possible for this Court toaccept the submission of the learned Senior counsel for the Petitioner that the timelimits under Section11-B(1) of the Act read with Rule 24-B of the Rules, notwithstanding Section 11-B(4) of the Act, are merely directoryand not mandatory. In fact, the wording of Section 11-B(4) of the Act underscores the mandatory natureof the time limit for filing an RFE in terms of Section 11-B(1) of the Act read with Rule 24-B of the Rules."24 ENISHI IP Friends Connections August 2018 No.19