National Phase Application timelines as under Indian law triumphs its PCT obligations

Introduction

India has recently witnessed a significant growth in patent filings, including national phase application filings through the Patent Cooperation Treaty (“PCT”) route. In this regard, the Hon’ble High Court of Delhi through its recent judgment of Humanity Life Extension LLC vs. Union of India and Anr., (W.P.(C) 12238/2019) has given an important clarification as to the timelines to be followed in such filings. The Hon’ble Court, while dismissing a writ petition of a PCT National Phase Applicant, has justified that India’s adherence to strict statutory timelines for National Phase Patent Application filings is valid. Further, clarifying that India by not allowing any extension of time as under Rule 138 of the Patent Rules, 2017, is not transgressing the Rule 49.6(f) of the PCT in any manner.

Background

The present Writ Petition was filed by the Petitioner, Humanity Life Extension LLC, which is a corporation based out of United States of America and engaged in the business of manufacturing medical devices. The Petitioner’s primary challenge through this petition was to obtain directions from the Hon’ble Court ordering the Controller of Patents to reinstate its National Phase Application and declare that an amendment to the Rule 138 of the Patent Rules in 2016 is ultra vires both to India’s PCT obligations specifically Rule 49.6 of the PCT and the existing Rule 23 of the Patents Rules, 2003 and Section 159 of the Patents Act, 1970. To this regard, it is relevant to clarify that Rule 49.6 of the PCT allows for a mechanism for an extension for national phase entrants, in case they are able to prove that the delay in filing the National Phase Application was unintended.

DECISION

Upon hearing the Petitioner’s case, the Court rejected the petitioner’s contention that the Rule 138 of the Patents Rule, is in contravention to India’s obligations to the PCT. Instead, the Court has relied on its previous order in the case of Diebold Self Service Systems v. Union of India and Ors. W.P.(C) 11136/2018, to reiterate that time period for filing National Phase Applications under the Indian Patents Act is mandatory and no exemptions can be provided if the National Phase Applications are not filed within the timeline. Similar to its stance taken in the Diebold case, the Court also reiterated that incompatibility between the clauses of the Indian Patent Rules and Regulation 49.6 of the PCT Regulations cannot be a ground for non-applicability of those clauses of the Patent Rules, as India has expressed its reservations in respect of Regulation 49.6(f) of the PCT Regulations, as allowed to it by the PCT Treaty.

The main issue for the Petitioner arose from the delay that occurred in its National Phase entry in India. As per the Petitioner, after initially filing the Application in the USA in February 06, 2017, it had filed its PCT Application No. PCT/US2018/016797 in September 05, 2018. As per the Petitioner’s US Attorney, they had instructed their Indian counterparts to make the filing of the Indian National Phase Application within the 31 months’ deadline i.e., September 06, 2019. However, despite the receipt of specific instructions, the Indian attorneys did not file the National Phase Application. Thereafter, the Petitioner forwarded its National Phase Application through a cover letter to the Indian Patent Office through different Indian attorneys on October 01, 2019, which was post the statutory deadline of 31 months. The Indian Patent Office returned the cover letter on October 03, 2019 and refused to entertain the Petitioner’s application. Thereafter, the Petitioner once again forwarded the application on October 09, 2019, this time, while mentioning India’s obligations to the Rule 49.6(f) of the PCT, however, the Indian Patent office once again returned the application. Aggrieved by the aforesaid refusals by the Indian Patent Office to entertain its National Phase Application, Petitioner preferred a Writ Petition before the Hon’ble Court challenging the Rule 138 of the Patent Rules, and India’s obligations to the PCT. The Petitioner asserted that since the delay from filing the National Phase Application from its end was unintentional, therefore, as under the Rule 49.6 of the PCT it should be allowed an extension of time.

Aside from seeking an extension of time, the Petitioner also put forth the case that the Section 159 of the Patents Act, 1970 gives powers to the Central Government to make rules in connection with the Patents Act, however, given that the India is a signatory to the PCT, and Chapter XXII of the PCT is present in the Patents Act, the Central Government is not allowed in any manner to make rules that contravenes the PCT.

ANALYSIS

This decision adds to other judgments namely FMC Corporation vs. The Controller of Patents, C.A.(COMM.IPD-PAT) 482/2022, and DS Biopharma Limited v. The Controller of Patents and Designs, C.A. (COMM.IPD-PAT) 6/2021 delivered by the Hon’ble Delhi High Court that reiterate the importance of adhering to procedural tenets during the processing of patent applications.

In view of the same, it is clear that the Courts in India are giving a particular emphasize as to the timelines assigned the patents applications, and the rules thereunder. Such cases help to clarify the timelines that international applicants must abide by. At a larger perspective, it shows that Courts are putting emphasis on how the timelines for Patent Applications are being obliged to not only by the Indian Patents office but also by the Applicants.

ABOUT THE AUTHOR

Mohit Kar is an Associate at Rahul Chaudhry & Partners. He has obtained his B.A. LLB (Hons.) from Maharashtra National Law University, Aurangabad in 2022. With an experience of over 1 year, Mohit is actively involved in handling all intellectual property litigation matters of the firm.