Clerical error fixed in time not fatal
The likelihood of a clerical error in patent application follow-up proceedings arising from the applicant or its agent quoting the wrong number when filing a request for examination or in other related proceedings is higher when the applicant or agent is dealing with many applications at the same time. On occasion, the wrong number is quoted when typing up a follow-up petition or request for examination. By the time the agent or applicant spots the mistake, the error may have proved fatal for the applicant as the deadline for filing the request for examination has passed and the automatic “deemed to be withdrawn” provision under Section 11B(4) of the Patent Act has been applied, meaning that the applicant loses its right to the patent. Does this mean that the applicant cannot correct such mistake? Until recently, Indian Patent Office (IPO) practice in such cases was guided by the Delhi High Court ruling in Nippon Steel Corporation v Union of India ([2011 III AD (Delhi) 226]), which the IPO interpreted to mean that the controller of patents is not competent to allow an application for amendment after the patent application has been deemed to have been withdrawn. As a result, many applicants lost the right to their patents. The IPO was often notified of such errors but always rejected the requests for amendment, and ultimately applications were deemed to be withdrawn under Section 11B(4).
However, in the recent Delhi High Court judgment in Iritiech Inc v Controller of Patents Justice Sachdeva resolved this dispute by holding that:
"when the error in Form 18 was an apparent clerical error... and... the request for examination was filed within the 48-month period and even the request for correction of the clerical error was made prior to the expiry of the period of 48 months and prior to the application for grant of patent being deemed to have been withdrawn... the action of the Respondents in deeming the Indian National Phase application No. 5272/DELNP/2008 as deemed to be withdrawn, is set aside."
In resolving this controversy, the court examined Sections 11B(12) of the act and Rule 24B of the rules pertaining to making a request for examination, and Section 78 pertaining to the power of the controller to correct errors. While elaborating the procedure from filing to examination, the court observed that:
“Under section 12 of the Act, when a request for examination is made in respect of an application for a patent under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto are to be referred at the earliest, by the Controller, to an examiner for making a report to him, inter-alia, as to 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 there under. The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) is to make the report to the Controller within such period as may be prescribed.
The request for examination under section 11B was filed on 30.06.2008 so the same under Rule 24B would have had to be referred to the examiner within one month of the receipt i.e. by 30.07.2008. The examiner would thereafter be required to submit the report within one month."
The judgment is important also from the point of view that it also raised the issue relating to the delay in examination of applications and non-adherence of timelines by IPO as prescribed under Rule 24B.The court's observation in this regard is worth noting:
“If the examiner had examined the application under 11B of the Act, in time and submitted his report to the controller, it would have been brought to the notice of the Petitioner well before the expiry of 48 months prescribed period, that there was an error in the request for examination and the petitioner could have taken steps to remedy the error.”
The court correctly interpreted the provisions of Section 78 relating to the power of the controller to correct the clerical error and held that:
“Section 78 of the Act, inter-alia, empowers the controller to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register. The correction can be made either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.”
The court ruling is also important as it held that even a letter would be sufficient to seek the amendment under Section 78. The court stated that:
“Since there is no form prescribed by the Act or the Rules for seeking correction under Section 78 of the Act, even a letter would be sufficient. The petitioner along with the letter had enclosed the corrected Form 18 and the corrected covering letter. The request was made prior to the expiry of the period of 48 months. The requisite fee was also paid thereon. There is no reason as to why the Respondents should not have considered the same.”
This decision has settled the controversy relating to the correction of inadvertent errors regarding the power of the controller under Section 78 to correct a clerical error in Form 18. It has provided much-needed relief to patent applicants who accidentally quote the incorrect number in patent application follow-up proceedings. In light of this decision, applicants are now better placed to correct inadvertent errors, provided that they fixed the clerical error in time. The IPO will now be required to speed up the examination process to meet the timeframe set out in Rule 24B.
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