Puneet Kaushik and Anr. v. Union of India and Ors.
W.P. (C) No. 1631 of 2013
before the Hon’ble High Court of Delhi
Decided on: 23.09.2013
The petitioners through their counsels filed on 14.09.2012 an international (PCT) application along with Form-25 at the Patent Office in New Delhi. Thereafter, an e-mail was sent to the Indian Patent Office by the counsels of the petitioner stating that though the Patent Application was duly submitted on 14.09.2012 the same has not been taken on record on the ground that the application was not within the jurisdiction of Receiving Office/India and was not accompanied by permission for filing outside India first. After some e-mail correspondences on the subject Indian Patent Office wrote to the petitioner’s counsel stating therein that Indian Patent Office had requested them to submit PCT application and a separate Form-25 from the said application because both had to be processed separately. It was also stated that there was only one set of document and they had the option to file either Form-25 or PCT International Application, so the lawyers informed the Indian Patent Office that they had been directed to file Form-25 only. Ultimately, Indian Patent Office had refused to give the date of 14.09.2012 as the International filing date.
As the Indian Patent Office had refused to give the date of 14.09.2012 as the International filing date on account of certain procedural defects including non-grant of permission as required under Section 39 of the Patents Act, 1970, the Petitioners filed a writ before the Hon’ble High Court of Delhi seeking a writ of mandamus directing the respondent to grant international filing date of 14.09.2012 and give the petitioners application an International filing number. Additionally, it was sought that the respondent be directed to declare that a PCT application filed in India at the Indian Receiving Office (RO/IN) would not require a prior permission under Section 39 of the Patents Act, 1970 and the Indian Receiving Office (RO/IN) be declared as the competent receiving office when an Indian resident/national is an application of the PCT application filed at RO/IN for at least one of any contracting states.
- Whether permission under Section 39 of the Patent Act is required before an international application can be filed by an Indian national; and
- Whether documents filed by the petitioner with the patent office at New Delhi on 14.9.2012 can be said to be international (PCT Application) within the meaning of the Regulations under the PCT and if the said documents can be treated as an ‘International Application’, what would be the date of filing of the said application.
The Hon’ble Court relied on Section 39 of the Patents Act, 1970 and made an observation that the important question in the case would be whether the application submitted on 14.09.2012 by the Petitioner was an application outside India or not. If yes, then the same would be governed by Section 39, otherwise not. The Petitioners contended that since the application was being submitted to patent office in India, it cannot be said to be an application made outside India. Respondent contended that an international application is an application outside India and the patent office in India only collects such application on behalf of international organization and forwards the same to it as a transmitting office.
The Hon’ble Court went through the scheme of the PCT regulations and PCT and held that, considering the scheme of the PCT it would be difficult to accept that the international application received by the Indian Patent Office is an application made in India. Under the scheme, such an office primarily acts as an office which receives such application, gives filing date to it and then transmits its copies to the concerned authorities such as International Bureau and International Searching Authority for further processing. Therefore, provisions of Section 39 are necessarily attracted to such an application. It was further held, that the practice adopted by Indian Patent Office is correct and an international application must necessarily be accompanied by a request under Section 39 of Patents Act unless such a permission has already been obtained or an application for a patent for the same invention had been made in India not less than six weeks before the international application is made.
In respect of the second issue, the Hon’ble Court relied on Article 11(1) and 11(2) of the PCT and held that documents that were filed by the petitioner with the patent office at New Delhi on 14.9.2012 can be said to be international (PCT Application) within the meaning of the Regulations under the PCT. However, the date of filing of the application was held to be 27.09.2012, i.e the date on which permission as required under Section 39 of the Patents Act, 1970 came to be granted to the petitioner, the same being a mandatory requirement for such an application and the international application, even if complete in all other respects cannot be given a filing date earlier than the date on which the written permit in terms of Section 39 is issued.
Thus, the Hon’ble Court disposed off the writ petition with a direction to the Respondent to grant within 6 weeks from the date of judgment, 27.09.2012 as the international filing date and assign an international number to the said application subject to their submitting the copies of specifications in required number, and paying the requisite fee/late fee, within such time as the respondents stipulate in this regard in the light of the provisions of PCT in this regard.