Page 54 - A&A Patents&Design Rewind-2016

PATENT OFFICE ORDER SET ASIDE FOR ITS
DISOBEDIENCE OF THE DECISION OF THE
APPELLATE AUTHORITYn OA/10/2014/PT/DEL (Tryton Medical Inc. Further, since the application of the Appellant/
v. Controller General of Patents & Anr.), the
IIPAB last in 2015 had considered the question
of whether an Applicant is permitted an extension
beyond the prescribed deadline under rule 138 for
filing national phase applications in India. The IPAB
had observed that there is no reason assigned by
the Controller for not considering a condonation
of delay petition u/r 138 and that under the
unamended Patents Rules, 2003, the time period
for filing the national phase application should
include the extension permitted under Rule 138, if
the Applicant shows sufficient cause for the delay.
In said order, the IPAB Bench had remanded the
matter back to Patent Office for fresh consideration
of the Controller and held as under:-
“But as far as the instant case is concerned there is a
specific provision under rule as per Rule 138 and as
such there is no justifications for the Controller
to overlook or brush aside the said provision and
to reject the relief sought for by the appellant
for extension of time (emphasis supplied by us). In
view of the aforesaid reasons, we are constrained to set-
aside the impugned order dated 02.07.2013.”
The Controller considering the matter afresh after
the remand, passed an order dated 19th January
2016, and once again rejected the application of
the Appellant/Petitioner on the ground that the
application is time barred, beyond the prescribed
time limit and as per Rule 22 of the Patent Rules,
2003 the same is deemed to have been withdrawn.
The Applicant preferred another appeal challenging
the order dated 19th January 2016 passed by the
Assistant Controller of Patents considering the
nature of the impugned order dated 19th January
2016, which prima-facie appeared to be not only
contrary to the finding and decision of the IPAB
dated 24th March 2015, but also appeared to have
been passed in wilful disobedience of the IPAB.
54 | Patents & Design
Applicant seeking the relief of grant of patent was
pending since 2010 the IPAB took up the appeal for
hearing and disposal on a very short notice.
It was contended by the Counsel of the Applicant
that the Assistant Controller of Patents has wrongly
held that the Hon’ble IPAB has only set-aside the
earlier order of the Controller but not condoned
the delay. It was submitted that such finding is made
by the Assistant Controller in utter defiance and
in wilful disobedience of the order of the IPAB
as the IPAB had set-aside the earlier order of the
Assistant Controller
It was further submitted that the application of the
Appellant/Applicant was not at all examined on
merits and the Assistant Controller placed reliance
on the amended Rules under Rule 138 clause 2
which came into force from 15th October 2013,
instead of passing a decision on the basis of rules
of 2010 which were ideally in operation at the time
the extension application was filed..
The IPAB, on hearing the Appellant, held that
the findings rendered by the Bench in 2015 make
it abundantly clear that IPAB had condoned the
delay of eight days and extended the time, and
consequently set aside the order passed by the
Assistant Controller of Patents and Designs dated
2nd July 2013. Therefore, the finding of the Assistant
Controller of Patents that the IPAB Bench has only
set-aside the earlier order of the Controller and
has not condoned the delay is not only factually
incorrect but also amounts to wilful and deliberate
misinterpretation of the finding of the Bench. The
IPAB further noted that the order of the Assistant
Controller of Patents is a verbatim repeat of his
earlier findings (in the order dated 2nd July 2013)
which was earlier set aside.