In the last post, Mr.Basheer has proposed a new way of dealing with the anomalies in practice when it comes to applying Section 21 of the Patents Act. The general opinion among patent practitioners is that the provision is used to unfairly get an applicant to “abandon” his application since there is no time limit on how long the patent office can sit on the application without responding to the applicant.
It appears that there is something else interesting as well; under Section 14 of the Act, if the examination report is adverse to the applicant, then before the disposal of the application, the applicant may make a representation for a hearing.
It must be noted that the representation must be made within the prescribed period, which is 12 months under Rule 24B. So typically these days most practitioners forward such a representation along with their response to the examiner's report.
Turns out that, not infrequently, the patent office gives a date of hearing which is after the prescribed 12 month period. Is this permissible is the question. Can there be a hearing under Section 14 after the prescribed period?
Some may say that Section 14 stipulates a time period for the applicant to make his representation, but does not give a timeline for the hearing by the patent office and so the patent office is justified in giving a date after the 12 month period.
My answer is, Section 14 need not set a timeline for the patent office because it is already provided for in Section 21.
A plain reading of Section 21 tells us that the 12 month period is to be observed strictly and the only instances where it may be extended are spelt out under sub-section 2 and 3. Sub-Section 2 provides that, at the end of the 12 month period if there is a pending appeal of the applicant filed before the High Court, then the 12 month period may be extended to a date that the High Court may determine.
Sub-section 3 of Section 21 and its proviso read thus:
If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine:
Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court
Does this sub-section refer to an extension given by the Controller to file the appeal spoken of under sub-section (2) or, does it generally refer to an extension from the 12 month period in case the applicant has not been able to file his response to the report? Since the sub-section refers to the time period within which the appeal may be instituted, it means the former.
For instance, if the time period for filing an appeal referred to in sub-section (2) starts just before the end of the 12 month period, then the applicant would naturally need an extension of the 12 month period so that he may file such an appeal, without having to worry about a deemed abandonment of his patent application under Section 21. However, sub-section (3) does not state if this is to be only at the representation by the applicant or suo motu.
If this be the case, it could be said that unless there is an extension of the 12 month period under sub-sections 2 or 3 of Section 21, the hearing under Section 14 too must be held only within the 12 month period.
The bottom line is that Section 21 applies with equal rigour to the applicant and the patent office. So no act of the patent office should have the effect of derogating from the period prescribed in Section 21.