Honble S. Chandrasekaran, Technical Member:
This is an appeal under section 117A (2) of the Patents Act, 1970 (hereinafter referred to as the Act) by Nokia Corporation against the order of the Controller of Patents dated 26.09.2007 passed in the matter of Patents Application No.1857/CHENP/2003.
2. The appellant has filed an international PCT application in EPO on 28.05.2001 which has been numbered as PCT/EP01/06069. The appellant has entered into the National Phase of various countries including India within the period prescribed under PCT. Accordingly the national phase application filed on 27.11.2003 by the appellant has been accorded Patent Application No.1857/CHENP/2003. Due to non-compliance of office requirements, the respondent passed an order refusing the grant of patent. Hence the above appeal.
3. The respondent examined the national phase application and issued the first examination report dated 12.04.2006 which comprised of few technical objections in addition to number of formal objections regarding the procedural matter. One such formal objection was about the status of the applications filed in foreign countries as to whether the same has been accepted and if yes to furnish copy of the examination report and accepted copy of the complete specification. The appellant had submitted the details of the national phase application filed in other countries and mentioned the filing date of the national phase application in India as 28.05.01 being the international filing date of the international PCT application in EPO. During subsequent examination of the patent application, the respondent has maintained the objection that âthe exact national phase entry dates shall be given in the annexure to the statements and undertaking on Form 3â and insisted that the international filing date shall not be mentioned there. In this respect the respondent offered an opportunity of hearing on 12.04.2007 to the appellant to put forth its observation in the event of non-compliance of this formal objection. Despite the fact that the applicant (appellant herein) submitted detailed observations mentioning the actual national phase entry date in the Form 3, which is similar to the practice followed in many such similar applications filed and prosecuted in the same IPO, Chennai and also in other International Patent Offices namely, USPTO, Australia, Canada and China, but the respondent refused the grant of patent on the said application on the ground that the applicant has given incorrect and false information and failed to disclose to the Controller the information required under section 8 of the Act.
4. The Appeal came up for hearing before us on 11.09.2008 when Shri A. Vijay Anand, learned counsel appeared on behalf of the appellant and Shri G. Desingu, learned counsel appeared on behalf of the respondent.
5. The learned counsel for the appellant submitted that the impugned order passed by the respondent is against clear mandate of the international laws and national laws. Further the learned counsel for the appellant submitted that the interpretation given by the respondent regarding the submission of particulars regarding actual date of filing to be given on Form 3 is incorrect. In this connection, the learned counsel referred to Article 11 (3) of the Patent Cooperation Treaty which states that the international filing date shall be considered as the actual filing date of the national phase application filed in each designated state. Article 11 (3) reads as under: -
â11 (3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.â
6. The learned counsel for the appellant referred to section 7 and section 138 (5) of the Act which mentions about the filing date of the application filed as a national phase application in India based on international PCT application. Section 7 (1A) and (1B) and section 138 of the Act are reproduced hereunder:
âSection 7. (1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
Section 138. (5) The filing date of application for patent and its complete specification processed by the patent office as designated office shall be the international filing date accorded under the Patent Cooperation Treaty.â
7. The counsel for the appellant submitted that the other International Patent Offices namely, Australian Patent Office, Canadian Patent Office, Chinese Patent Office confirmed the date of application of these national phase applications as the international filing date. The counsel also submitted that the purpose of providing the details of these national phase applications filed in different countries to the respondent is to help him in dealing with the examination of the Indian application effectively as the respondent will have more opportunity to go through the data and objections raised by those offices under their jurisdiction. The counsel also submitted that from the impugned order of the respondents, it is evident that the respondent had easy access to the data available on the WIPO website. The counsel further submitted that the appellant is duty bound to inform the details of the foreign application stating the status of the application in any foreign Patent Office under section 8(2) of the Act and therefore no special advantage is gained by the appellant by producing these details to the respondent. The counsel for the appellant also referred to section 53 of the Act stating that the term of the patent, if granted, on the said national phase application will be calculated from the international filing date accorded under the PTC regulation but not from the actual date of filing of the national phase application in India. Thus there is no relevance to the actual filing date of the national phase application in India. The counsel for the appellant further stressed that the respondent has wrongly interpreted the provisions of section 7, section 8, and rule 12 of the Patent Rules, 2003 confusing between the actual date of application with the filing date of application. Further, the counsel for the appellant argued that the respondent has failed to recognise that no undue advantage has been gained by the appellant by mentioning the international filing date on Form 3 and further contended that the respondent has failed to recognise that no material information has been concealed by the appellant while furnishing these details on Form 3 as required under section 8 of the Act. Finally, the counsel for the appellant submitted that the impugned order of the respondent may be set aside and allow this national phase patent application to proceed to grant the patent.
8. The counsel for the respondent submitted that according to Article 11 (3) of the PCT regulations when a national phase application in respect of an international PCT application is filed in a designated state, the date of the application shall be the actual filing date in each designated state and it is very clear from this Article that the actual entry date in India is the actual date of application. Therefore, the date of application and the filing date of application are not synonymous, they are entirely different. The counsel for the respondent argued that on the international filing date, there was no existence of these national phase applications since they were all filed subsequent to the international filing date and thus the appellant is hot having right to replace the national phase entry date given by the respective national patent office with international filing date or some other date at their will. The counsel for the respondent submitted that the appellant has failed to disclose the correct information as required under section 8 to the Controller but has furnished an information which is fully false to his knowledge, thus not met the requirement of the office objection taken by the respondents office and, therefore, the application for patent has rightly been refused.
9. We have heard the arguments of the learned counsel for the appellant and respondent. Firstly, let us peruse the relevant portions of the PCT provisions and that of the provisions of the Act referred to by them.
The Article 11(3) of the Patent Cooperation Treaty reads as under:-
â11(3)-- Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.â
Section 7 (1), (1A) and (1B) of the Act reads as under:-
âSection 7 (1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.â
Section 138.(5) of the Act reads as under: -
â(5) The filing date of application for patent and its complete specification processed by the patent office as designated office shall be the international filing date accorded under the Patent Cooperation Treaty.â
10. It is very clear, from the wordings of the above PCT provisions, that the international filing date shall be considered to be the actual filing date in each designated state. Also Chapter III under the heading âInternational applications under Patent Cooperation Treaty (PCT)â of the Patents Rules, 2003 (in short the Rules) exhaustively deals with the procedure of filing of an international PCT application. Further the rule 23 of the Rules makes a particular emphasis that even the provisions of Chapter III shall remain supplemental to the PCT and in the case of a conflict, the provisions of the Treaty shall have an over-riding power and those provisions only would apply in relation to the international applications.
11. Looking at the provisions of section 7(1B) of the Act, the filing date of national phase application in a designated state, i.e. for India, has been referred to be same as the International filing date accorded under the PCT, without any ambiguity. Coming to the aspect of furnishing of information on Form 3 about the details of foreign patent filings, the same has to be filed normally alongwith the application or within the prescribed period as required under section 8 of the Act read with the rule 12 (1A) of the said Rules which prescribes a period of three months from the date of filing of the application. Similarly while considering the provisions of furnishing the further filing particulars or information on Form 3 under section 8 of the Act, about the foreign filing details, (if not filed alongwith the application) subsequent to the filing in India, the same is to be filed within three months from the date of filing of such application as prescribed under the rule 12 (2) of the said Rules.
12. Here in rule 12(1A) of the Rules the date of filing referred to is the actual filing date of the national phase application in India, so that the applicant will have sufficient time to get the details from their foreign counterparts and provide to the Controller of Patents. If it is otherwise, i.e., had the date of filing be that of International filing date, the time would have run out long back and the applicant would not be able to provide the details within the prescribed time period. Therefore the intention of the legislature is clear while providing explanation to sub-rule (1A) of rule 12 of the said Rules, wherein the time period is given, mainly for calculating the period within which the statement and undertaking on Form 3 as required under sub-section (1) of section 8 of the Act is to be filed in the designated state. Rather to give a much beneficial time period to collect the details of other foreign filings and submit to the Patent Office in the designated state viz., India, the emphasis has been made on the words âactual date on which the corresponding application is filed in Indiaâ, but not to restrict in any way the meaning of the words âactual date on which the corresponding application is filedâ. The details given here in this form are only to help the respondent in dealing with the examination of the application effectively and other than this no undue advantage is gained by the appellant. Therefore, it is very clear, that no material particulars could be concealed by the appellant if the international filing date is mentioned on Form 3. Moreover, the Form 3 requires to give the following details only: -
(i) Name of the country
(ii) Date of application
(iii) Application No.
(iv) Status of the Application
(v) Date of Publication
(vi) Date of grant
13. Further, the applicant also gives an undertaking that he would keep the Controller of Patents informed in writing, the details regarding corresponding application filed outside India within three months from the date of filing of such application outside India. Possibly if this filing is done at a date later than the Indian filing date, then the Controller of Patents would be in a position to verify whether the applicant has supplied the information regarding foreign filing within the prescribed time. Equally when the period is reckoned from the actual filing date of national phase application, the applicant would be in an advantageous position, as otherwise compared to, when this three months period reckoned form the date of filing being the international filing date which would normally have expired much time long ago. Whereas in the information now supplied on Form 3 by the appellant, all dates of filing are either same as Indian filing date or earlier to the Indian filing date. Hence the date is immaterial or there is no specific gain or advantage to the appellant. Hence, it can be noticed very clearly that the appellant has not concealed any material information, by mentioning the international filing date on Form 3. In fact the provision given in sections 7(1B) and 138(5) of the Act is the date of application which is same as the PCT International application filing date. Moreover, the set practice followed in the respondents office in various other cases, is also that, only the international filing date is mentioned as per the provisions in sections 7(1B) and 138(5) of the Act and rules 12(1) and (1A) and 23 of the Patent Rules, 2003.
Here it is pertinent to note that the respondent in his impugned order stated that âif the agents argument is true, the patent office should have numbered and dated the instant application as 1857/CHENP/2003 dated 28th May, 2001, but the respondent office has made the date of application as the actual filing date viz., 27th November, 2003 â. The reason behind this is that to make this beneficial for the applicant to reckon the period of three months easily and correctly without confusion and ambiguity, but with definite clarity, from this actual filing date instead of the International filing date.
The Hon'ble Supreme Court in the case of State of Jharkhand Vs. Govind Singh (2005) 10 Supreme Court Case 437 has held that:
âWhen the words of a statute are clear, plain or unambiguous i.e. they are reasonably susceptible to only one meaning, the courts are bound to give effect to that meaning irrespective of consequences. The intention of the legislature is primarily to be gathered from the language used, which means that attention should be paid to what has been said as also to what has not been said.â
The High Court of Delhi in a service matter (benefits) LPA No.98/ 2005 between GOVT. Of NCT OF DELHI and ORS. versus K. R. Jain and Ors., (2006 IV AD (DHC) 529 J SHIV NARAYAN DHINGRA, held that:
âWhere, therefore, the âlanguageâ is clear, the intention of the legislature is to be gathered from the language used. What is to be borne in mind is as to what has been said in the statute as also what has not been said. A construction which requires, for its support, addition or substitutions of words or which results in rejection of words, has to be avoided, unless it is covered by the rule of exception, including that of necessity, which is not the case here, but we have to give a benevolent interpretation only.â
Union of India v. Deoki Nandan Aggarwal (AIR 1992 SC 96 at p. 101)
âThe question is not what may be supposed and has been intended but what has been said. Statues should be construed, not as theorems of Euclidâ,
Judge Learned had said, âbut words must be construed with some imagination of the purposes which lie behind themâ. (See Lenigh Valley Coal Co. v. Yensavage â 218 FR 547, 553)
Therefore, the interpretation shall always swing in favour of the applicant for Patent and be beneficial to him. In fact, the interpretation of the respondent appears to be erroneous and incorrect.
14. In view of the matter as stated above, the balance of convenience would lie in favour of the appellant and refusal of patent on such a flimsy ground would cause irreparable loss to the appellant and would become or set up a wrong precedent in the patent procedures. In view of the aforesaid discussions, we are clearly of the view that there is nothing wrong in mentioning the international filing date as the filing date in a national phase entry application and notice that neither the appellant has been found to have failed to disclose to the Controller (here the respondent) the information required under section 8 of the Act nor has he furnished the information which in any material particular was false to his knowledge. There appears to be no further technical objections from the respondents office.
15. In view of the above, we allow the appeal and the impugned order dated 26.09.2007 of the respondent is set aside with a direction to the respondent to issue order for grant of Patent to the appellant at the earliest. However, there shall be no order as to costs.