22. Arguments on
unconstitutionality: It is humbly
stated that even Indian applicants may and regularly choose to employ the PCT
Route since the PCT route gives them a preliminary opinion on the patentability
of their invention. The Impugned Notice has the consequence of applying
different norms for Indian applicants under the PCT Route and regular Indian
applicants, with there being no intelligible reason being proffered by the
Respondent to support this differential treatment. In other words, the mere
fact that an applicant chooses to file under the PCT Route is not sufficient
enough a reason to apply different standards in the absence of a statutory
provision which envisages such treatment. Therefore, the Impugned Notice
violates Article 14 of the Constitution since there is unreasonable
differentiation among Indian applicants.
23. Arguments on
Public Interest: It is humbly
submitted that one of the reasons that the Respondent has issued the Impugned
Notice with respect to national phase PCT applications is that, in quite a few
instances in the Indian Patent Office relating to National Phase PCT
applications, the Indian Patent Office does not conduct a search and
examination of its own; instead, it relies upon the results of the
International Search Report (ISR) and International Preliminary Report on
Patentability (IPRP) issued in the International Phase of the PCT Route. This
is contrary to the mandatory duties of search and examination stipulated under
the Act under Section 12 of the Act, which apply to all patent applications
filed before the Patent Office, regardless of the route through which they are
filed. Section 12 of the Act is reproduced hereinbelow:
"12. Examination of application: (1) When a request for examination has been
made in respect of an application or a patent in the prescribed manner under
sub-section (1) or sub-section (3) of Section 11B, the application and
specification and other documents related thereto shall be referred at the
earliest by the Controller to an examiner for making a report to him in respect
of the following matters, namely:
(a) whether the application and
the specification and other documents relating thereto are in accordance with
the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful
ground of objection to the grant of the patent under this Act in pursuance of
the application;
(c) the result of investigations
made under Section 13; and
(d) any other matter which may be
prescribed.
(2) The examiner to whom the
application and the specification and other documents relating thereto are
referred under sub-section (1) shall ordinarily make the report to the
Controller within such period as may be prescribed."
24. Nowhere does Section 12 carve out exceptions
for National Phase PCT applications with respect to search and examination. The
very purpose of these provisions is that the Indian Patent Office must apply
Indian law and standards of patentability to applications filed before it,
regardless of the observations in the ISR and the IPRP. Since the PCT itself
states that the ISR and IPRP are non-binding opinions, it makes it incumbent on
the Indian Patent Office to thoroughly perform its duties under Section 12
since this provision represents the first line of defense to protect public
interest from grant of unwarranted and frivolous patents. Through the Impugned
Notice, the Indian Patent Office seeks to ensure that the contents of the
Indian National Phase Application are same as that of the International
Application so that the results of the ISR and the IPRP can be accepted in toto
without any search or examination being undertaken under Section 12 of the Act.
In a way, the Impugned Notice facilitates non-performance of mandatory duties
of search and examination which puts public interest in grave peril because
patent rights are not mere private rights, but have a concrete public interest
angle to them.
25. As
submitted earlier, under the framework of the Act and as rightly laid down by a
Division Bench of this Hon’ble High Court in Franz Xaver Huemer v. New Yash
Engineers (AIR 1997 Del 79), a granted patent may be challenged only under the
grounds enumerated in Section 64 of the Act, none of which pertain to
non-performance of mandatory duties by the Indian Patent Office. In short,
under the law, a patent cannot be revoked nor its validity be challenged on
grounds of improper or non-examination of the patent by the Indian Patent
Office. In light of this, it becomes all the more imperative to ensure that the
Indian Patent Office performs its mandatory duties since opaqueness in grant of
a patent has a tangible adverse effect on public interest. Consequently, the
Impugned Notice must be quashed since it renders secondary the public interest
aspect of the quid pro quo equation which patent rights represent. The instant
PIL is an attempt to protect such public interest since there are no recourses
available under the Act post the grant of the patent to challenge it on
procedural or administrative grounds.
26. Annexed herewith as Annexure B is Appendix C from the annual report of the Indian
Patent Office for the year 2009-10. The said Appendix captures the number of
patent applications filed in the last 10 years before the Indian Patent Office.
Out of the 34, 287 patent applications filed before the Indian Patent Office in
2009-10, close to 23,431 applications are National Phase PCT applications. In
short, they constitute close to 68.37% of the total number of patent
applications filed before the Indian Patent Office in 2009-10. The Appendix
reveals that this proportion has remained more or less the same over the last
10 years. If the Patent Office chooses to rely on the findings in the ISR and
the IPRP in such a huge chunk of patent applications, without undertaking
search and examination of its own, the adverse consequences on Indian public
interest can only be imagined. Consequently, it is imperative that the Impugned
Notice be quashed and guidelines be issued by this Hon’ble Court in accordance
with Section 12 of the Patents Act, 1970 and Patent Rules, 2003 on search and
examination of patents by the Indian Patent Office. It is submitted that such
guidelines are necessary for two reasons. First, the public at large must not
suffer due to grant of patents which claim unpatentable subject-matter and
which have been let through due to non-adherence to the framework of the Act. Second,
genuine patentees must not suffer due to improper examination of their
applications despite having fulfilled all their statutory obligations.
Therefore, it is humbly prayed that besides quashing the Impugned Notice, this
Hon’ble Court also issues guidelines for search and examination in accordance
with the Act.
PRAYER
28.
In light of
the above, it is humbly prayed that this Hon’ble Court be pleased to:
(a)
Declare that
PCT applicants have the right to amend the contents of their specification before
they file a National Phase PCT application under the Patents Act, 1970; and consequently
(b)
Quash the Impugned Notice No. CG/Public Notice/PO/2012/15 dated July 2,
2012 issued by Controller General of Patents, Designs and Trademarks as being
unconstitutional to the extent it goes against Prayer (a);
(c)
Issue
guidelines on search and examination of patent applications in accordance with
Section 12 of the Patents Act, 1970 and the corresponding Rules under Patent
Rules, 2003;
(d)
In the
interim, stay the Impugned Notice to the extent it goes against Prayer (a) until
the disposal of the instant Petition;
Such other orders as the court may deem fit in the interest of
justice.
It is prayed accordingly.
J.Sai Deepak
Petitioner
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