Improper Examination of Patent Registration in India

Improper Examination of Patent

Section 12 and 13 of the Patents Act, 1970 specifies the improper examination of patent. Specifically, Rule 81 (3)(a) read with Rule 57 (3) explains  the improper examination of the patent. Patent claims amended but the same were not examined property nor were they advertised. The defendant has cited several documents containing the prosecution history in order to support this challenge that there was a case of improper examination. It is further contended that as per Section 13(3) of the Patent Act whenever the claims are amended in the patent specification then the patent has to be re-examined and advertised again, and the process of registrability falls from there and then. It cannot be the case that after the amendments the patent is not examined and investigated upon by the controller by overlooking the provisions of Section 13 (3). It is therefore argued that there is serious challenge which exists is that the claims were amended on the very last day and taken on record without any examination which is complete irregularity apparent on the face of record.

The said improper examination may arise either on the default of the controller or examiner by overreaching the process of the law and not following the provisions of the Act or on the basis of misrepresentation of the applicant for the patent. The compliant of the defendant when it criticizes the examination process is based on two fold grounds which include both the defaults at the controller’s end and consequent contravention of the provisions of the Act as well as the misrepresentations made by the plaintiffs. It may also be possible that the misrepresentations made by the plaintiffs might have persuaded the controller to proceed in the manner which has lead to improper contravention of the provisions of the Act. Therefore, it cannot be said that no such ground is available for revocation under the Patents Act.

On the conjoint reading of the aforementioned provisions, following position emerges:-

• Where the complete specification is amended before the grant of patent, the amended specification shall be examined and investigated in the like manner as the original specification which is clear from Section 13(3) of the Patents Act.
• Section 57 provides for the amendment of application and specification or document before the controller and the said provision is subject to section 59.
• The reading of head note of section 57 and the wordings of the said section would indicate that the said section provides for the process of amendments carried either prior to the grant of patent and or after the grant of patent.
• A reading of Section 57 (3) would reveal that any application for leave to amend the complete specification made after the grant of the patent and the nature of proposed amendment may be published.
• The said Section 57 through seemingly provides for the process of amendment for both pre grant and post grant proceedings. But, so far as publication is concerned, sub section 3 only expressly provides for publication in the case where amendments are proposed after the grant which invite construction of the said provision.
• Section 57 (6) provides that the provision of this section shall be without prejudice to the right of applicant for patent to amend his specification or any document related thereto to comply with the directions issued before the grant of patent.
• The conjoint effect of section 57 (6) and Section 57 (3) indicates that the amendments which are filed under Section 57 relates to voluntary amendments and not the amendments which are consequent upon the directions of the Controller as the same remains unaffected as per sub section 6 of section 57 of the Act. Up till this stage, here is no confusion. However, the debate begins when one sees Rule 81 (3) (a) read with section 57 (3) which provides that the application for amendment made after the grant shall be published and reads it with Section 13 (3) alongside which says that when the complete specification is amended before the grant of patent, the amended application shall be examined and investigated in the like manner.

Now the question arises as to whether the expression “examined and investigated” as original specification would include the stage of publication or not in order to come to the findings as to whether publication of the amendment is possible pre grant in the absence of express provision regarding such publication of amendment. From the bare reading of the provisions existing prior to the amendment vis-à-vis newly inserted provisions after the amendment of 2005, it is amply clear that the amendments are indicative of the legislative intent which is manifest on the face of it. The said legislative intent emerging from the reading of the provisions can be enumerated as under:

• That prior to the amendment of 2005, the said section 57 (3) as well as rule 81(3) provided that any application for amendment of specification after the acceptance shall be advertised and the same holds good both under the Section as well as for rule as they stood prior to the amendment.
• After the amendment, the said aspect of publication has been qualified by addition of words “made after grant” in order to provide the aspect of publication only when the amendments are proposed after grant of patent.
• This is also clear when the said amendment has been carried out restricting the duty to publish with the corresponding discretion which is conferred upon the controller to issue further directions which will remain unaffected. This has been done by insertion of Section 57 (6) wherein the controller in any case may give such directions in spite of what has been contained in Section 57.
• The legislature intent of this nature is self- evident from the fact that the amendment of 2005 conferred the right of post grant opposition to the third party in addition to pre grant opposition and thereafter the patent is also vulnerable to challenge in civil court or in IPAB in the form of revocation proceedings and therefore there are ample opportunities conferred upon the third party opponent with the additional right to object post grant improper examination which was earlier absent prior to the amendment.
• Therefore, the legislature intent which is emerging from the collective reading of the Sections as seen above is that the process for grant of patent has been simplified with less obstructions and opposition right has been classified into two parts so that there should be less obstruction or hurdles at the pre grant stage and the patent should proceed smoothly towards the grant and in the event amendments are carried out after acceptance but prior to grant, the same can be taken care of at the post grant stage where the third party has got the right to challenge the said patent post grant. Accordingly, consciously the said section 57 (3) and also rule 81 (3) have been amended whereas the earlier provisions were giving wider right of opposition to the third party upon publication of each and every amendment with the corresponding duty to the controller to advertise every amendment on the other hand, the newly enacted provisions wherein both rights and duties are curtailed in the pre-grant stage by not insisting the publication prior to the grant but after acceptance and the same are shifted to the post grant stage in order to align the scheme of the Act.

This can be the only recapitulation and interpretation which can be done in the light of what existed prior to amendment and what has been conferred after the amendment. It is thus seen that the legislature has consciously amended the said provision and the amendments done cannot be rendered otiose by conferring any additional duty upon the Controller to advertise which was his duty prior to the amendment of the Act and this would be doing injustice to the express words of the Statute and the mandate and command emerging therefore in the form of amended provisions which will tantamount to reducing the words of the Statue into dead letters. Therefore there exists no such duty on the controller to publish each and every amended if the complete specification is amended after acceptance but before the grant.

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