We have a guest post from a senior member, associated with a leading law firm, who wishes to remain anonymous.
We have had many discussions with many practitioners who have lamented the lack of consistency in applying statutes, rules and guidelines by the different branches of the Indian Patent Office, specifically the Delhi Patent Office and the Chennai Patent Office. This post highlights one such inconsistency. This post is not to criticize any practice adopted by the Indian Patent Office but to highlight the need for consistency in approach of all the branch offices of the Indian Patent Office.
In our experience with dealing with the Indian Patent Office, we have observed different practices being followed by the different branches of the Indian Patent Office on several occasions. One such difference is with respect to the practice followed by the Delhi Patent Office and the Chennai Patent Office in accepting an International Patent Application under Patent Cooperation Treaty (PCT) by applicants. The difference in practice largely arises due to varied interpretation of the relevant provisions by these two branches of the Indian Patent Office.
The relevant provisions are Article 11 of the PCT and Rule 19 of the ‘regulations under the PCT’. While Article 11 imposes a duty on the Receiving Office, Rule 19 specifies where an International Application may be filed.
According to Article 11, the Receiving Office shall accord the date of receipt of the international Application as the international filing date, provided that that Office has found, inter alias, that at the time of receipt the applicant does not obviously lack the right to file an international Application with the Receiving Office for reasons of residence or nationality.
Rule 19 states the ‘international Application shall be filed, at the option of the applicant (i) with the national Office of or acting for the Contracting State of which the applicant is a resident, (ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or (iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.’
In light of these provisions, the understanding that at least one of the co-applicants should be either Indian national or resident is common between the Delhi and the Chennai Patent. However, once an Indian national or resident is made a co-applicant, the difference resides in understanding whether this Indian national or resident has to be a co-applicant in Indian or any state contracting to the PCT.
Accordingly, if one were to file an International Application where a company registered in USA is the assignee and sole applicant; his Application would be rightly rejected by both these branches of the Indian Patent Office. Now, if for the same Application, an Indian inventor is included as an applicant in India or all contracting state, both the Delhi as well as Chennai Patent Office will rightly accept the Application. However, if again for the same Application, the Indian inventor is included as an applicant for one or more contracting states other than India, for example, the US, the Application will be accepted by the Chennai Patent Office but rejected by the Delhi Patent Office. This is where the difference in the practice is evidenced.
In more than one instances, we have attempted to file International Applications with an Indian inventor as co-applicant only for the US with the Delhi Patent Office as the Receiving Office and have been turned down. According to the Delhi Patent Office, it can act as the Receiving Office appropriately only for those International Applications where the Indian national or resident applicant is an applicant for India. On the other hand, the Chennai Patent Office has taken a broader interpretation of the provisions and accepts these Applications if the Indian inventor is the co-applicant in any one or the contracting state. This contracting state need not necessarily be India.
Mindful that these are international Applications where both the Patent Offices are only acting as a Receiving Office on behalf of International Bureau, we refer again to the previous example to explain the difference between an International Application where the Indian inventor is included as an applicant in India and an International Application where the Indian inventor is included as applicant in the US. In the first case, when the International Application enters the US national phase, the Indian inventor will be treated as a co-applicant for the US national phase Application in the US while the inventor will not be the co-applicant in the Indian national phase Application corresponding to this International Application. In the second case, the Indian inventor will be a co-applicant for the national phase Application in India and for any other designated contracting states which may have been selected at the time of the filing of the International Application. Yet, in any case, the requirement that at least one of the co-applicants should be either Indian national or resident is satisfied at the time of filing the Application with the Receiving Office.
Accordingly, while we refrain from commenting whether the approach taken by the Delhi Patent Office is right or wrong, we feel that the approach adopted by the Chennai Patent Office meets the requirement of the law and at the same time provides applicants in India the convenience of filing International Applications at the Indian Patent Office in cases where to the applicants choose to pursue the Applications in countries other than India.