Can patent validity be challenged on “procedural” or “administrative” grounds?
Few discussions on patents deal with the aspects of the law that provide succour to the patentee. One provision whose complete impact has not been fully explored is Section 13(4) of the Patents Act. Section 13 deals with the investigation that a patent examiner should undertake to check for anticipation of a patent application by prior publication or claim.
Section 13 lists the patent and non-patent literature which the examiner shall review to assess the novelty of the invention claimed in an application. Subsection (4) states that the examination and investigation required under Sections 12 and 13 of the act shall not warrant the validity of the patent.
Section 13(4) further states that no liability shall be incurred by the central government or any officer thereof by reason of, or in connection with, any examination, investigation, report or other consequent proceedings.
Section 13(4) has been correctly interpreted as denying any kind of presumptive validity to a patent granted under the act. But this is just one side of the coin. In addition to denying presumptive validity and shielding examiners from liability of any kind, Section 13(4) also ensures that the patentee does not suffer due to or is not penalised or held responsible for any act of commission or omission by the examiner during the examination of the application.
In other words, if the Patents Act requires the examiner to perform a certain task or duty which the examiner fails to perform, the validity of the patent shall not be impugned on grounds that the examiner did not perform such duty. The patentee shall not be denied a remedy citing an oversight or dereliction on the part of the examiner.
This interpretation is supported by logic, since if the patentee or applicant for a patent has fulfilled all of its obligations under the act, it should not pay the price for an act of neglect by the examiner. Furthermore, if the legislature wanted the patentee to pay the price for oversight or neglect on the part of the examiner, Section 64 of the act, which lists the grounds of revocation, would have specifically provided for this as an additional ground.
None of the grounds for revocation provided in Section 64 permit the rejection of a patent's validity on the grounds of improper examination, incomplete search or improper preparation of reports by the examiner. Critically, the grounds under Section 64 are exhaustive in nature. Therefore, the scope of challenge to the validity of a patent is restricted to the specific grounds set out in Section 64.
This is further supported by the fact that both the Intellectual Property Appellate Board (IPAB) and the High Court, which have the authority to entertain a petition or a counterclaim for revocation of a patent under Section 64, are vested with original powers to test the validity of the patent on substantive grounds, not administrative ones. In other words, the scope of enquiry of the IPAB or the High Court is restricted to testing the validity of the patent solely on grounds detailed in Section 64, and no other. The IPAB and the High Court are vested with such powers so that they may step into the shoes of the examiner and the legislature, and can verify for themselves whether the claimed invention deserved the patent.
Thus, the effect of Section 13(4) is threefold:
- The patentee cannot claim to enjoy any presumptive validity merely on account of grant of the patent after due examination.
- The examiner shall not be exposed to liability of any kind for any act or omission performed in the course of his or her duty.
- The grant of the patent shall not be rejected for the non-performance of any obligation by the examiner, including obligations under Sections 12 and 13 of the act. The patent’s validity may be challenged only on grounds set out in Section 64.
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