In this case, the petitioners, on 14th September 2012, filed a PCT application with Indian Patent Office (IPO) at New Delhi being the Receiving Office (RO). The petitioners also simultaneously submitted request for foreign filing permission (Form 25) which the petitioners claimed to be as per the practice of Indian Patent Office.
The petitioners stated that they had written to the PCT Legal Division seeking clarification regarding the validity of the jurisdiction of IPO as RO. One of the confirmations sought was whether the international filing date was independent of the forwarding of the record to International Bureau by the RO. The PCT Legal Division drew the attention of the petitioners to PCT rules and confirmed their understanding.
Thereafter, the petitioners requested the Indian Patent Office to take the application on record and allot the international filing date as 14th September 2012. The IPO alleged that the petitioners had been informed that only one set of documents were received by the IPO (two sets were required as the permission for foreign filing and PCT application are processed separately) and hence, the petitioners were given the option for proceeding with either the PCT application or the foreign filing permission. The IPO alleged that the petitioners had opted for the second option. The petitioners then moved to the Court for relief.
The petitioners requested the court to:
- Direct the respondent authorities to grant the international filing date as 14th September 2012 to the petitioner’s international application and take the same of record by assigning a PCT application number;
- Direct the respondent authorities to declare that a PCT application filed in India at the Indian Receiving Office (RO/IN) would not require a prior permission under section 39 of the Patents Act, 1970;
- Direct the respondent authorities to declare the Indian Receiving Office (RO/IN) as the competent receiving office when an Indian resident / national is an applicant of the PCT application filed at RO/IN for at least one of any contracting states.
The Arguments of the Patent Office
The respondents argued that the petitioners did not file international application for patent under PCT and had only filed an application for permission for filing outside India under Section 39 of the Indian Patent Act on Form-25. The respondents highlighted that a resident of India cannot file an application outside India without obtaining the aforesaid permission.
- Whether permission under Section 39 of the Patent Act is required before a PCT application can be filed by an Indian national? and
- Whether the documents filed by the petitioner with the IPO at New Delhi on 14th September 2012 can be said to be a PCT Application within the meaning of the Regulations under the PCT and if the said documents can be treated as a PCT Application, what would be the date of filing of the said application?
Analysis by the Court
After an analysis of the provisions of the Indian Patent Act and the PCT regulations, the Court found it difficult to accept the contention that the PCT application received by the IPO is an application made in India. According to the Court, the IPO merely receives the application, assigns a filing date to it and then transmits the PCT application to the concerned authorities, such as the International Bureau and the International Searching Authority, for further processing. The entire processing thereafter takes place outside India, either by the International Bureau or by the International Searching Authority. Therefore, the provisions of Section 39 are necessarily attracted to PCT applications, and hence it is necessary to be granted a written permission for foreign filing by the Controller before a PCT application can be processed. Hence, the practice adopted by the IPO is correct.
The Court rejected the petitioner’s argument that a PCT application filed in India would be subject to scrutiny and clearance under Section 35 but not under Section 39 of the Indian Patent Act. The Court highlighted that the written foreign filing permit in terms of Section 39 of the Indian Patents Act, was granted to the petitioner only on 27th September 2012, though the PCT application was delivered in the Patent Office on 14th September 2012. Since written permit in terms of Section 39 was a mandatory requirement for such an application, the PCT application, even if complete in all other respects, cannot be given a filing date earlier than the date on which the written foreign filing permit is issued. Therefore, the respondents could not have acceded to the request of the petitioners to give 14th September 2012 as the international filing date.
The next issue was whether the petitioners had submitted only an application for foreign filing permit or had they also simultaneously submitted an application to the Indian Patent Office on 14th September 2012.
After analyzing the relevant provisions of the PCT and the Indian Patent Act, the Court held that the PCT application, if it otherwise confirms to the mandatory requirements of the Articles and Regulations of the PCT, can be given 27th September 2012 as the international date.
The Court held that it was not a mandatory requirement to file the copies in requisite number, while submitting the PCT request, since the RO is required to invite the applicants to comply with the requirements of PCT it is only on failure of the petitioners to provide copies in requisite number that the PCT application can be treated as withdrawn. The Court also stated that even if the Power of Attorney is missing, the RO should accept the application and invite the petitioners to correct the deficiencies.
The Court directed the IPO to grant, within six weeks of the order, 27th September 2012 as the international filing date in respect of the PCT application submitted by the petitioners to the Indian Patent Office on 14th September 2012 and assign an international number to the said application subject to their submitting the copies of specifications in required number, and paying the requisite fee/late fee, within such time as the respondents stipulate in this regard in the light of the provisions of PCT in this regard.
- PCT application will not be accepted without a written permit for foreign filing. The international filing date cannot be before the date on which the written permit for foreign filing was issued
- IPO is a valid RO if at least one of the applicants is an Indian Resident.
- The RO is expected to accept a PCT application even if it has deficiencies, such as missing power of attorney. The RO should invite the applicants to correct the deficiencies after the PCT application has been allotted a PCT application number and international filing date.