ブックタイトル縁19号

概要

縁19号

NOTABLE POINT:From the above judgement it is clear that in cases where the response to FERis crosses the deadline as mentioned in Rule 24B(5) and (6), the applicant will not have recourse toRule 138 for condoning the delay.In yet another case of Nokia Corporation vs Deputy Controller Of Patents and Designs [W.P. No.2057of 2010 and M.P.No.1 of 2010 - High Court of Madras dealt with the powers of the Controller to allow anational phase application to be filed beyond the 31 month deadline. The Indian Patent Office (IPO) arguedthat requests under rules 137/138 ought to be made within the prescribed time limit. Since the request wasnot made within the 31-month period, it could not be taken on record. Justice Vinod K Sharma of the MadrasHigh Court disagreed, quashing the IPO's earlier order. The court returned the application to the IPO,observing "it was not correct on the part of the Deputy Controller to have rejected the application, bytreating it to be not maintainable". It also held that: "application for extension is to be filed within one monthafter expiry of prescribed time under Rule 20. In case, an application is moved for extension of time…it isrequired to be decided on merit by taking into consideration facts and circumstances of each case." Thereforethe Court specifically noted that the‘prescribed period' under Rule 138(2) included the one monthextension period and hence, so long as an appropriate application under Rule 138 is moved within onemonth from the 31 month deadline, the Controller had to exercise his discretion in deciding whether toextend the timeline or simply dismiss the application.NOTABLE POINTS:The decision given by Madras High Court lies in the interest of the applicantswho seek to get their inventions patented. It provides an opportunity to those who intend to revivetheir abandoned applications if the abandonment was unintentional. Rules must be followed and enforced.But then, there must also be exceptions, where necessary, as there simply is no purpose servedby terminating an application on the basis of an unintentional, human or clerical error. The presentpatent system should be in such a manner as to decide patent rights on the merits of the applicationrather than on intentional errors.Further in the recent judgement of Beckman Coulter Biomedical vs Union Of India on 2 February, 2017W.P.No.9785 of 2013 reiterated the decision given by Madras HC and held that, it is a well settled law thatthe Courts and statutory authorities are to do substantial justice. The object of Rule 138 is that prescribedtime under Rule 20 can be extended by period of one month on showing of sufficient cause and it is at thediscretion of the Controller to extend the period on facts and circumstances of the case.SUBSTANTIVE RIGHTS VS PROCEDURE TECHNICALITIESIn the case of Ferid Allani v. UOI 2008 (37) PTC 446 (Del.) at the High Court of Delhi Justice Gita Mittalobserved that the rule of deemed abandonment is one which has the effect of denying valuable substantiverights to an applicant not only for the reason that his patent application will effectively stand rejected, butalso since an order under Section 21 is not an appealable order, unlike an order of rejection on merits underSection 15, which can be the subject matter of an appeal. It was also held that Parallels with variousother statutes and procedural laws (like the CPC) on the issue of adherence to prescribed time periodsshow that the courts have uniformly been of the view that rules of procedure are directory in nature andcannot override substantive rights as‘procedure is the hand maiden of justice'. The Hon'ble SupremeCourt of India, in its Judgement, reported as AIR 2005 SC 3304: Smt. Rani Kusum Vs Smt. Kanchan Devi, reiteratedthe afore mentioned stand as "Processual law is not to be a tyrant but a servant, not an obstructionIP Friends Connections August 2018 No.19ENISHI25