In a writ petition filed by Puneet Kaushik (Puneet) against the Indian Patent Office (Patent Office), the Division Bench of the Delhi High Court upheld the order of the Single Judge/Patent Office, which refused to: (i) treat applications under the Patent Cooperation Treaty (PCT) as Indian applications, and (ii) grant a filing date for the PCT application till  a foreign filing license under Section 39 of the  (Indian) Patents Act, 1970 (Act) was obtained.

Background

The issue arose when Puneet’s attorneys tried to file a PCT application and an application for foreign filing license (Form 25) under Section 39 of the Act on 14 September 2012, simultaneously, enclosed under one covering letter with the Patent Office. The Patent Office refused to accept these together because of its internal procedural difficulties in accepting said applications at different counters. Puneet’s attorneys requested the Patent Office to treat the entire set of documents as a request on Form 25.

Subsequently, the Patent Office granted the foreign filing license to Puneet on 27 September 2012 but did not process the PCT request and refused to grant a filing date. Aggrieved, Puneet filed a writ petition before the Single Judge seeking inter alia the following reliefs: (i) direct the Patent Office to accord the PCT application an international filing date as 14 September 2012, and (ii) direct the Patent Office to declare that the PCT application submitted to the Patent Office is an application made in India and such PCT applications do not require Form 25.

Decision

The Single Judge, upheld the following arguments of the Patent Office: (i) the Patent Office was merely a receiving office for the PCT application, (ii) prior foreign filing license had not been obtained by Puneet, and (iii) the PCT application was incomplete; and directed the Patent Office to accord 27 September 2012 as the international filing date within 6 weeks of his order dated 23 September 2013. Aggrieved by the order of the Single Judge, Puneet preferred an appeal with the Division Bench which was dismissed upholding the Single Judge’s order. The Division Bench’s Order states:

It may be pointed out that if the appellant had adopted the course of first filing an Indian application for patent and on expiry on six weeks, an international application were to be filed then the international filing date would have dated back to the date when the Indian application was made. However, such is not the present case and the appellant having consciously chosen a particular course is barred from claiming an alternate process.” (sic)

Khaitan Comment

Going strictly by the provisions of Section 39 of the Act, the decision seems appropriate. Section 39 inter alia states that no Indian resident can make or cause to be made any application outside India for a grant of a patent for an invention unless a prior permission is obtained or the applicant files for the foreign application after 6 weeks from the date of Indian application. It is pertinent to note that the provisions use the wider term ‘Indian resident’ instead of using ‘Indian national’ or ‘citizen’. These provisions are also applicable in case the Indian resident assigns the invention to a foreigner/assignee located abroad, which is clear from the words ‘cause to be made’. However, there is still lack of clarity on the applicability of these provisions in relation to inventions which are not patentable in India.

From the provisions of the Act, it may appear that the provisions are only applicable in case of patentable inventions but our past enquiries with the Patent Office reveal that the Patent Office extends this applicability towards non-patentable inventions as well. Therefore, software companies may not be in a position to argue that these provisions are not applicable since software is not an invention under Section 3 of the Act. Apparently, the Patent Office’s reason for following this practice is that the purpose of the provisions is to protect India’s defence and atomic energy interests and it is immaterial whether the invention under consideration is patentable or not. If the Patent Office were to issue a written clarification on the applicability of the aforesaid provisions, there would be greater clarity.