Madras High Court
Ntt Docomo Inc vs The Assistant Controller Of Patents And ... on 28 March, 2014
Author: T.Raja
Bench: T.Raja
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 28.03.2014
CORAM
THE HONOURABLE MR.JUSTICE T.RAJA
W.P.No.6594 of 2013
NTT DoCoMo Inc.,
an incorporated company having office at
11-1, Nagatacho 2 chome
Chiyoda-ku
Tokyo 100 6510, Japan
represented by its Constituted Attorney
Mr.Sharad Vadehra .. Petitioner
-vs-
1. The Assistant Controller of Patents and Designs
The Patent Office
Intellectual Property Rights Building
GST Road
Guindy
Chennai 600 032
2. The Controller of Patents
The Patent Office
Baudhik Sampada Bhavan
S.M.Road, Antop Hill
Mumbai 400 037, Maharashtra
3. The Union of India
through the Secretary
Department of Industrial Policy and Promotions
Ministry of Commerce and Industry
Udyog Bhavan, New Delhi .. Respondents
Petition under Article 226 of the Constitution of India, praying for the issue of a Writ of Certiorarified Mandamus, calling for the records relating to the communication of the 1st respondent dated 14th December 2012 made in Patent Application No.4851/CHENP/2007/VAA/CNA and quash the same and direct the respondents to reinstate the Patent Application No.4851/CHENP/2007 thereby allowing further prosecution of the said application as per the Patents Act, 1970.
For Petitioner :: Mr.P.S.Raman
Senior Counsel for Mr.A.A.Mohan
For Respondents :: Mr.C.V.Ramachandramurthy
Central Government Counsel
ORDER
The present writ petition has been directed against the impugned communication issued by the first respondent-Assistant Controller of Patents & Designs, Chennai made in Application No.4851/CHENP/2007/VAA/CNA dated 14.12.2012, in and by which the first respondent refused the prayer of the petitioner for revival/reinstatement of their application on the ground that the application filed by the petitioner vide letter dated 4.12.2012 cannot be taken on record, since the application does not exist.
2. Mr.P.S.Raman, learned senior counsel appearing for the petitioner, assailing the reasoning given by the first respondent, submitted that the first respondent failed to properly appreciate the reasons stated by the petitioner for reinstating the Patent Application No.4851/CHENP/2007 mistakenly withdrawn by the erstwhile patent attorneys due to clerical error. Adding further, it was stated that the petitioner is a company incorporated under the laws of Japan and involved in the business of electronics and telecommunication since 1991. During the course of business, the petitioner had invented two innovated technologies. In view of the above two innovations, the petitioner company filed Patent Application No.4851/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller" that is in respect of notifying an increase pattern of transmission rate increased in response to RG(UP). The said patent application was based on the International patent application numbered as PCT/JP06/306533 dated 29.3.2006 claiming priority of Japanese patent application number 2005-096540 filed on 29.3.2005. Along with the said application, one another patent application No.4814/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller" that is in respect of notifying a decrease pattern of transmission rate decreased in response to RG(DOWN) was also filed. This patent application was also based on the International patent application numbered as PCT/JP06/306523 dated 29.3.2006 claiming priority of Japanese patent application number 2005-096539 filed on 29.3.2005. After filing the above said patents, the erstwhile patent attorneys had communicated the same to the petitioner company. When the erstwhile patent attorneys communicated the above developments, the patent attorneys had erroneously referred the patents with their application numbers interchanged, namely, application No.4851/CHENP/2007, originally meant for increase pattern of transmission technology, was shown as the patent application for decrease pattern of transmission technology. Similarly, application No.4814/CHENP/2007, originally meant for decrease pattern of transmission technology, was shown as the patent application for increase pattern of transmission technology. Subsequently, the petitioner company, finding that the decrease pattern of transmission technology had become redundant, decided to withdraw the same world wide, while retaining the increase pattern of transmission technology.
3. Continuing his arguments, the learned senior counsel further submitted that when the decrease pattern was not adopted by 3GPP TWG as an EUL technical standard, the corresponding foreign applications of increase pattern had already been granted in favour of the petitioner by the patent office in several countries such as Australia, China, Japan, South Korea, Russia, Singapore and United States and the patent right granted for increase pattern in the United States is a plan to enter into the Patent Pool viz., SIPRO LAB TELECOM/W-CDMA Patent Pool. That clearly shows that the petitioner company never intended to abandon its patent application for the innovation relating to increase pattern. While so, when the petitioner company instructed its erstwhile patent attorneys to file a request for withdrawal of the Indian Patent Application No.4851/CHENP/2007 believing in good faith that the same relates to notifying the decrease pattern of transmission rate decreased in response to RG(DOWN), the patent office had issued a confirmation letter dated 18.9.2012 informing the petitioner company that the patent application has been withdrawn. But the petitioner company was completely unaware of the mistake committed by the erstwhile patent attorneys in interchanging the patent application numbers. Indeed, when the patent application No.4814 relating to decrease pattern of transmission technology was to be withdrawn, the patent application No.4851 relating to increase pattern of transmission technology was wrongly withdrawn due to clerical error. In fact, the erstwhile agent of the petitioner had confused between the two patent applications handed over to them for filing and in view of the initial confusion, the letter of withdrawal was mistakenly given in respect of the impugned patent application. However, when the petitioner company was doing the transfer of file to the current patent attorneys, the petitioner was informed about the mistake as to the interchange of patent application numbers and the patent application in relation to notifying an increase pattern of transmission rate increased in response to RG(UP) had been withdrawn by the erstwhile patent attorneys, instead of the patent application relating to notifying a decrease pattern of transmission rate decreased in response to RG(DOWN). Immediately after scrutinising the patent applications and after ascertaining the further fact that the patent application No.4851 was unintentionally and mistakenly withdrawn, a petition under Rule 137 of the Patent Rules, 2003 was filed on 3.12.2012 before the respondents herein making a request to revive/reinstate the patent application No.4851/CHENP/2007, which actually relates to notifying an increase pattern of transmission rate increased in response to RG(UP). In the said petition, although a proper explanation was clearly mentioned that the erroneous withdrawal of the patent application No.4851/CHENP/2007 was due to the incorrect reporting by its erstwhile patent attorneys, that the instruction from the petitioner company was bona fide and that the mistaken withdrawal was unintentional and beyond the control of the petitioner, since the petitioner was completely unaware of the mistake committed by the said erstwhile patent attorneys, the petitioner requested the first respondent to correct the irregularity relating to the said patent application and to reinstate/revive the patent application No.4851/CHENP/2007. But the first respondent refused the said prayer, by the impugned order, stating that the said petition cannot be taken on record, as there was no provision under the Patent Act, 1970 or the rules by which the said patent application can be revived or reinstated. Adding further, it was stated that the first respondent had wrongly proceeded that the application itself ceased to exist, therefore, the request of the petitioner for revival of the patent application No.4851 cannot be acted upon. The said reasoning is wholly erroneous, contrary to the intention and purpose of the statute, hence, the same is liable to be set aside, he pleaded.
4. Further demonstrating the prejudice suffered by the petitioner company, Mr.P.S.Raman submitted that if the application is not reinstated, there would be serious loss to the scientific development in the field of radio and telecommunication technology. Adding further, it was stated that the first respondent has completely failed to appreciate that the letter of withdrawal was wrongly given by the erstwhile patent attorneys of the petitioner in respect of patent application No.4851, instead of the actual intended application No.4814. When the petition was submitted before the first respondent under Section 78 of the Patents Act read with Rule 137 of the Patent Rules, it clearly shows the intention of the petitioner to withdraw the patent application No.4814/CHENP/2007 and to prosecute the patent application No.4851/CHENP/2007, since the technology in patent application No.4851 is more commercial and relevant in the current scenario in the world of telecommunication, but the first respondent wrongly came to the conclusion that the Controller under Rule 137 of the Patent Rules, 2003 does not have the power to correct any irregularity relating to the withdrawal of the patent application No.4851/CHENP/2007 or to revive/reinstate the patent application even though mistakenly withdrawn by the petitioner. Referring to Section 78 of the Patents Act, it was contended that the first respondent has got enormous power 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 manner which is entered in the register. When sub-section (3) of Section 78 empowers the Controller to make any such correction in pursuance of a request made under this section by following certain procedures, namely, giving notice of the proposal to the patentee or to any other person who appears to him to be concerned, an opportunity of hearing before making the correction, the first respondent cannot take a stand that the Act does not empower the Controller to correct any irregularity. Even though sub-section (3) of Section 78 does not apply to the petitioner, which contemplates giving of notice followed by providing a reasonable opportunity, for the reason that the petitioner is the only party before the first respondent, when Section 78 read with Rule 137 clearly empowers the first respondent to correct any clerical error, the first respondent ought to have exercised that power to take on record the petition filed by the petitioner to reinstate the patent application No.4851.
5. Adding further, it was also stated that Section 21 of the General Clauses Act, 1897 also makes it clear that where any power is conferred by any regulation, that power includes the power to add to, amend, vary or rescind any orders, rules, or bye-laws so issued. Finally, concluding his arguments, Mr.P.S.Raman pleaded that when Section 78 read with Rule 137 confers sufficient power upon the Controller to correct clerical errors in any patent or other document filed in pursuance of such application or in any application for a patent which is entered in the register, the first respondent has got power to correct the mistake. In other words, it was contended that the power given to the first respondent to do certain things would include the power to undo if any mistake is brought to his notice, if the Controller thinks fit upon such terms as he may direct. In support of his submissions, he has also relied upon the judgment of the Apex Court in Rafiq and another v. Munshilal and another, (1981) 2 SCC 788 to say that a party should not suffer for the inaction, deliberate omission or misdemeanour of his agent. Similarly, in the present case, when the petitioner's erstwhile attorneys mistakenly furnished the wrong numbers in the two patent applications and the petitioner company was unaware of the mistake committed by the erstwhile patent attorneys in interchanging the patent application numbers, the first respondent ought not to have made the petitioner to suffer and incur irreparable loss and injury in view of the misdemeanour of the erstwhile patent attorneys of the petitioner. On this basis, it was pleaded that the petitioner company which is involved in the business of electronics and telecommunication world wide since 1991, being the owner of the above mentioned two innovations, its request to withdraw the outdated technology, namely, patent application No.4814/CHENP/2007 should be accepted, otherwise the petitioner would be forced to pursue the obsolete technology, which cannot be the aim of the respondents nor the Act. On this basis, he prayed for allowing the writ petition.
6. Per contra, Mr.C.V.Ramachandramurthy, learned counsel appearing for the respondents, heavily opposing the prayer made in the writ petition, submitted that the present writ petition is not maintainable, as the impugned order passed by the first respondent has clearly mentioned that the application filed by the petitioner under Rule 137 of the Patent Rules cannot be taken on record, since the application does not exist. When there is no provision under the Patents Act, 1970 or the Rules framed thereunder enabling the first respondent-Controller to revive/reinstate the petitioner's application, after the withdrawal of the petitioner's application on 18.9.2012 under Section 11-B(4)(i) and Rule 26(1), the matter was already published and the notice of withdrawal was made public through the official communication. Therefore, it is not open to the petitioner to say that the first respondent has got the power conferred under Section 78 of the Act or under Rule 137 of the Rules to revive/reinstate its application. Adding further, the learned counsel for the respondents submitted that although the clerical mistakes are required to be corrected, when the patent application is in the prosecution stage, in the present case, the petitioner's patent application was already withdrawn on 18.9.2012 when the application is not in existence, the subsequent letter dated 3.12.2012 made by the petitioner's company requesting to revive/reinstate its application cannot be entertained, as it had already become fait accompli.
7. Continuing his arguments, the learned counsel for the respondents submitted that Section 21 of the General Clauses Act cannot be pressed into service in the present case, for the reason that the Patents Act, 1970 and the Patent Rules, 2003 framed under the said Act are self contained to deal with each and every situation cropped up in the process of registration of the patent application, therefore, going outside the provisions of the Patents Act and Rules and pressing into action Section 21 of the General Clauses Act to say that the power to issue also includes the power to add to, amend, vary or rescind, cannot be applied to the present case. In support of his submissions, he has also heavily relied upon an order passed by the High Court of Delhi in W.P.(C) No.801 of 2011 dated 8.2.2011 (Nippon Steel Corporation v. Union of India) to say that once an application is deemed to have been withdrawn by an application in terms of Section 11-B(4)(1) of the Patents Act, the Controller of Patents cannot entertain any application for amending any portion of such application, resultantly, Rule 137 cannot be invoked by the office of the Controller of Patent to permit an amendment to a patent application that has already been withdrawn by operation of Section 11-B(4) of the Act.
8. Heard the learned counsel for the parties.
9. When the petitioner company has invented two new technologies, namely, Patent Application No.4851/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller" that is in respect of notifying an increase pattern of transmission rate increased in response to RG(UP), the said patent application was based on the International patent application numbered as PCT/JP06/306533 dated 29.3.2006 claiming priority of Japanese patent application number 2005-096540 filed on 29.3.2005. The said patent application was filed by the petitioner company through their patent attorneys De Penning and De Penning of Indian Law Firm having office at Chennai. One another patent application No.4814/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller", is in respect of notifying an decrease pattern of transmission rate decreased in response to RG(DOWN). This patent application was also based on the International patent application numbered as PCT/JP06/306523 dated 29.3.2006 claiming priority of Japanese patent application number 2005-096539 filed on 29.3.2005. When the erstwhile patent attorneys of the petitioner company communicated the factum of filing of the above applications to the petitioner, they had erroneously referred the patents with their application numbers interchanged, namely, application No.4851/CHENP/2007, originally meant for increase pattern of transmission technology, was shown as the patent application for decrease pattern of transmission technology. Similarly, application No.4814/CHENP/2007, originally meant for decrease pattern of transmission technology, was shown as the patent application for increase pattern of transmission technology.
10. After sometime, the petitioner company reviewed the subject matter of both the applications and found that the innovation relating to decrease pattern of transmission rate decreased in response to RG(DOWN) is not important in the current scenario of telecommunication technology, as it is not essential to enhance the up-linking standard and has become outdated technology, therefore, they decided to withdraw the downward transmission technology by retaining the upward transmission technology. In view of that, the petitioner company instructed its erstwhile patent attorneys to withdraw the Indian patent application No.4851/CHENP/2007 believing that the same relates to decrease pattern of transmission rate decreased in response to RG(DOWN). But mistakenly as the erstwhile patent attorneys had furnished the wrong number to the patent application, namely, instead of withdrawing patent application No.4814/CHENP/2007 relating to decrease pattern of transmission rate decreased in response to RG(DOWN), wrongly the patent application No.4851/CHENP/2007 was sought to be withdrawn. Accordingly, the first respondent, accepting the request of the petitioner company, passed an order on 18.9.2012 allowing the petitioner company to withdraw the said application under Section 11-B(4)(1) and Rule 26(1). Hence, the question is, whether the Controller of Patent has got power to rectify or undo the clerical error committed by the attorney while entering the same in the patent register?
11. In this context, it is more pertinent to reproduce Section 78 and Rule 137 of the Patent Act/Rules, which are given as under:-
"S.78. Power of Controller to correct clerical errors, etc.--(1) Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications for patents or complete specifications or other documents relating thereto and subject to the provisions of section 44, the Controller may, in accordance with the provisions of this section, 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.
(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.
(3) Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.
(4) Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be published in the prescribed manner.
(5) Within the prescribed time after any such publication as aforesaid any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
R.137. Powers of Controller generally.--Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct."
12. A careful reading of the above section 78 unequivocally indicates that the Controller of Patent has got the power to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or any clerical error in any matter which is registered in the register. Further sub-section (2) also makes it vividly clear that any correction may be made upon a request in writing made by any party interested and accompanied by the prescribed fee or without such a request. Indeed, the power given to the Controller of patent appears to be enormous, since the expression is unambiguous that a correction may be made by the Controller even without any request. That further shows that if the Controller of patent was of the view or was fully satisfied on the available record that any mistake had crept at the instance of the person moving an application, he need not wait even for a request in writing to correct any clerical error in any patent which is entered in the register, of course, after giving notice to the affected person as contemplated under sub-section (4) of Section 78. But in the present case, the situation to comply with the conditions mentioned under sub-section (4) to issue notice to the affected party does not arise, for the obvious reason that first of all, there is no affected party to issue notice to them and secondly, the petitioner company, which is the owner of the technologies, made it clear in the application that only due to the incorrect reporting by the erstwhile patent attorneys in interchanging the application numbers, the patent application No.4851/CHENP/2007 was unintentionally and mistakenly in good faith withdrawn, instead of patent application No.4814/CHENP/2007, which was neither wanton nor deliberate. That apart, the power given under Rule 137 of the Patent Rules, 2003 also makes the issue conspicuous that any document,for the amendment of which no special provision has been made in the Act may be amended by specifically stating that any irregularity in procedure which, in the opinion of the Controller, may be obviated without detriment to the interests of any person. Therefore, when Rule 137 is far more clear than Section 78, giving more power to the Controller of patent to carry out any amendment by plainly telling the Controller of patent to obviate any irregularity in procedure without detriment to the interests of any person, the general power given under Rule 137 in favour of the Controller of patent is almost similar and identical to the power given under Section 21 of the General Clauses Act, which indicates that the power includes the power exercisable in the like manner and subject to the like sanction and conditions (if any), to add to, amend, vary or rescind any orders or rules, in the sense, power to do a particular thing vis-a-vis the power to undo the same.
13. In view of the above, the argument placed before this Court by the learned counsel for the respondents denying that the Controller has no power either under Section 78 or under Rule 137 to correct any bona fide mistake committed without any intention is liable to be rejected, inasmuch as accepting his argument would amount to taking away the power given under Section 78 and Rule 137 which would belittle the purpose and object of the Act and Rules. In this context, the reliance placed on the Hon'ble Delhi High Court order in W.P.(C)No.801 of 2011 dated 8.2.2011 (Nippon Steel Corporation v. Union of India), is patently inapplicable to the present case, for two reasons. Firstly, in the said case, an amendment was sought to disregard the Japanese priority date of 9th February, 2006 and to change the application with an idea to extend the deadline for filing the Request for Examination (RFE) from 9th February, 2007, since the RFE has to be made in terms of Section 11-B(1) of the Act within a period of 48 months from the date of priority of the application or the date of filing the application, whichever is earlier, on the ground that a docketing error occurred in the office of the attorney of the petitioner therein. The said request was rejected on the ground that the request was hit by limitation. Secondly, once the amendment was allowed, it would relate back to the date of the application for the grant of patent and it was also found that the request for amending the priority date was with a view to indirectly get the time for RFE extended. But in the present case, the only ground mentioned in the application for rectifying the clerical error was due to the bona fide and inadvertent mistake committed by the petitioner's erstwhile attorneys in interchanging the patent application numbers, as mentioned already. While the petitioner company wanted to withdraw the out dated and obsolete technology viz., the decrease pattern of transmission rate decreased in response to RG(DOWN), due to the clerical error committed by the petitioner's erstwhile attorneys, the increase pattern of transmission rate increased in response to RG(UP) had been wrongly withdrawn, as a result, the petitioner company, who is an innocent party, should not suffer injustice in view of the mistake, error and misdemeanour committed by its erstwhile patent attorneys. Therefore, this Court, finding that the facts of that case and the purpose for which the application was moved in Nippon Steel Corporation case are totally different from the present case, is unable to accept its applicability.
14. As a matter of fact, indisputably, the petitioner is the owner of two innovations and they had also registered their patent application No.4851/CHENP/2007 in respect of notifying an increase pattern of transmission rate increased in response to RG(UP) and another patent application No.4814/CHENP/2007 in respect of notifying a decrease pattern of transmission rate decreased in response to RG(DOWN), the increase pattern has already been granted in favour of the petitioner by the patent office in several countries such as Australia, China, Japan, South Korea, Russia, Singapore and United States. Moreover, in the United States, the patent right granted for increase pattern is a plan to enter into the Patent Pool. Therefore, the grant of patent right for increase patent clearly demonstrates that the petitioner company never intended to abandon its patent application relating to increase patent. Accordingly, when a mistake was inadvertently committed by the erstwhile patent attorneys of the petitioner company while registering the patent applications, the purpose and intention of the company to withdraw the decrease pattern of transmission rate decreased in response to RG(DOWN) relating to patent application is clear, hence, unintentionally and inadvertently, a clerical error committed by the erstwhile patent attorneys of the petitioner company cannot make the petitioner to suffer irreparable injury. When the petitioner is an innocent party, as rightly pleaded by the learned senior counsel for the petitioner, the first respondent-Controller of Patents having invested with huge power under Section 78 read with Rule 137 cannot refuse to revive/reinstate the instant petition. Otherwise, the petitioner would be forced to pursue an out dated and obsolete technology, contrary to the intention and purpose of the Act as well. Therefore, the impugned order is set aside and the writ petition stands allowed. Consequently, M.P.No.1 of 2013 is closed. No costs.
Index : yes 28.03.2014
Internet: yes
ss
To
1. The Assistant Controller of Patents and Designs
The Patent Office
Intellectual Property Rights Building
GST Road
Guindy
Chennai 600 032
2. The Controller of Patents
The Patent Office
Baudhik Sampada Bhavan
S.M.Road, Antop Hill
Mumbai 400 037
3. The Secretary to Union of India
Department of Industrial Policy and Promotions
Ministry of Commerce and Industry
Udyog Bhavan
New Delhi
T.RAJA, J.
ss
W.P.No.6594 of 2013
28.03.2014