Saturday, February 09, 2013
In a recent decision issued by the IPAB, the Board in yet another excellent decision issued by Justices Sridevan and Parmar, has suggested to the patent office to implement a revised numbering scheme for applications. The decision was issued in a case to direct the patent office to accept a national phase application filed with less than the prescribed fees. (Decision).
In my view, the patent office has ducked a major issue for now: receiving extra fees from applicants who enter national phase with a reduced set of claims than at the international application filing stage. This extra money goes to the coffers of the patent office, and the applicants have to pay this fees even when there is no examination of the cancelled / deleted claims. This issue is not just limited to collecting extra fees for cancelled claims. Our patent office charges higher fees wherever possible - and a possibility always remains - invitation for applicants to litigate.
For example, patent office charges arbitrarily extra fees for gene sequences applications (post), patent office charges higher fees for providing information under the RTI Act (post), and this case (patent office charges fees for cancelled / deleted claims). These instances together show that the patent office wherever possible collects extra fees from the public. The logic seems to be - collect extra money where possible - but the extra money collected is not applied for the benefit of the public, or it is not seen that it is applied for the benefit of the public. After all, patents are granted because they serve a public purpose / policy, yet when it comes to the application of funds, the patent office applies a same yardstick for all - pay and play - no pay no play. One concrete example is the RTI applications requesting information: patent office can easily provide the information under the RTI Act @ a lower fee but it chooses to charge a higher fee under the scheme of the patents act.
Facts: An applicant had submitted a PCT application with 20 claims. At the national phase entry stage three claims were cancelled, and the applicant tried to the application with the fees for 17 claims only. This process was done before the expiry of the 31 month deadline. However, the controller returned the application on the ground that the fees was insufficient.
Issue: Aggrieved by the Controller's decision returning the application, the applicant approached the IPAB.
Applicable Law: Under section 138 (4) of the Patents Act, 1970, (hereafter "Act") a PCT application designating India has the effect of filing an application for patent under section 7, 54 and 134 and the title, description, claims, abstract and drawings, if any, filed at the international application stage are to be taken as complete specification for the purposes of the Act. Section 139 provides that all the provisions of Act apply to a convention application.
Under the applicable law, the applicant was required to file the complete specification as filed in the international application. This application contained 20 claims. According to First Schedule (Rule 7 of the Patents Rules (hereafter "Rules"), a fee of Rs.1000/- is prescribed for filing Form 1 and an additional fee of Rs.200/- for each claim in excess of 10 claims is to be paid.
In this case, the applicant should have paid a fees of Rs.3000: Rs. 1000 for FORM 1, and additional claim fees @ Rs.200 for 10 extra claims. However, the applicant paid only Rs. 2500. And the Controller had returned the application on the ground that the fees were insufficient.
Conclusion: Allowing the appeal from the applicant, the IPAB directed the Controller to take the application on record. Because "the Controller’s rejection of the application on the last date only on the ground of insufficient of fees appears to be unreasonable since the appellant has not been given an opportunity to rectify his mistake. The patent application may fail for other reasons but not because perhaps by a miscalculation or arithmetical error, the correct fees has not paid. In this case there are the following factors which persuade us to interfere. 1) The rejection of the application was beyond the 31 months making it impossible for the applicant to set the lapse right. Therefore, we must allow the appeal."