M/S. IRITECH INC v. THE CONTROLLER OF PATENTS

16. To resolve the controversy we would need to examine the scheme of Sections 11 B, 12 of the Act, Rules 24 B of the Rules pertaining to making a Request for Examination and Section 78 pertaining to power of controller to correct errors.

17. Section 11B of the Act which deals with request for examination and section 12 which deals with examination of the applications read as under: “Section 11B. Request for examination (1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period. (2) Omitted by the Patents (Amendment) Act, 2005 (3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person. (4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under subsection (1) or sub-section (3), the application shall be treated as withdrawn by the applicant: Provided that—

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

12. Examination of application.— (1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely:— (a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made there under; (b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;

(c) the result of investigations made under section 13;

(d) any other matter which may be prescribed.

(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.

18. Section 11 B of the Act, inter-alia, prescribes that no application submitted for grant of a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner, for such examination, within the prescribed period and if no request is made within the prescribed period the application would be deemed to have been withdrawn.

19. Under section 12 of the Act, when a request for examination is made in respect of an application for a patent under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto are to be referred at the earliest, by the Controller, to an examiner for making a report to him, inter-alia, as to whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made there under. The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) is to make the report to the Controller within such period as may be prescribed.

20. Rule 24B of the Rules that prescribes the respective periods referred to in Section 11B and 12, reads as under: Rule 24B. Examination of application.— (1)(i) A request for examination under section 11 B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

(iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

(v) The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later. (2)(i) The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later: Provided that such reference shall be made in order in which the request is filed under sub-rule (1).

(ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;

(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller. (3) A first examination report along with the application and specification shall be sent to the applicant or his authorised agent ordinarily within six months from the date of the request for examination or six months from date of publication whichever is later. In case other interested person files the request, for examination, an intimation of such examination may be sent to such interested person. (4) The time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements.

21. Under Rule 24B (1) of the Rules, a request for examination under Section 11 B of the Act is to be made in Form 18 within fortyeight months from the date of the priority of the application or from the date of filing of the application, whichever is earlier. In the present case, the last date admittedly was 07.01.2010.

22. Rule 24B (2)(i) of the Rules, inter-alia, prescribes that the Controller shall refer the application and specification and other documents to the examiner, in respect of the applications where the request for examination has been received, ordinarily within one month from the date its publication or one month from the date of the request for examination whichever is later.

23. Under Rule 24B(2)(ii), the examiner is to make a report, under sub-section (2) of section 12, between one month to three months, from the date of reference of the application to him by the Controller.

24. Section 11A of the Act, dealing with Publication of applications, stipulates that an application for grant of patent shall ordinarily not be open to the public for such period as may be prescribed. After the prescribed period, during which it is not open to public, the application is to be published as soon as possible. Rule 24 of the Rules prescribes the period, during which it would not be open to public, as 18 months from the date of filing of the application or the date of priority of the application, whichever is earlier. After the expiry of the said period, the Controller has to publish the application in the journal, within one month.

25. In the present case, the Indian National Phase application, for grant of patent, was made on 18.06.2008. The request for examination under Section 11B(1) of the Act, mentioning an incorrect application number, was made on 30.06.2008. The priority date of the application is 07.01.2006. In terms of Rule 24, the application for grant of patent had to be published within one month of expiry of 18 months of the date of application (i.e. 18.06.2008) or 18 months of the priority dated (i.e. 07.01.2006), whichever is earlier. Under Rule 24B, the request for examination under section 11B had to be referred to the examiner within one month of the publication. In the instant case, the earlier of the two dates is 07.01.2006, so the publication would have had to happen within one to three months of expiry of 18 months thereof. i.e. within three months of 07.07.2007.

26. The request for examination under section 11B was filed on 30.06.2008 so the same under Rule 24B would have had to be referred to the examiner within one month of the receipt i.e. by 30.07.2008. The examiner would thereafter be required to submit the report within one month. If the examiner had examined the application under 11B of the Act, in time and submitted his report to the controller, it would have been brought to the notice of the Petitioner well before the expiry of 48 months prescribed period, that there was an error in the request for examination and the petitioner could have taken steps to remedy the error.

27. The Petitioner on 02.01.2010 filed a letter with the Respondents seeking correction under section 78 of the Act. The request for correction was made prior to the expiry of the prescribed period of 48 months, which was to expire on 07.01.2010.

28. Section 78 of the Act, which deals with the power of the Controller to correct errors, reads as under:

29. Section 78 of the Act, inter-alia, empowers the controller 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 matter which is entered in the register. The correction can be made either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

30. The rules prescribe various forms for different actions under the Act and the Rules. The First Schedule read with Rule 7 rules provides for the forms and the fee to be paid for various actions under the Act and the Rules. With regard to an application under section 78 for corrections, the First Schedule stipulates as under: The First Schedule (See rule 7) FEES Number of Entry On what payable Number of the relevant form Amount of fee (in rupees) For natural persons(s) For other than natural persons(s) either alone or jointly with natural persons(s)

1. 2. 3. 4. 5. * *** * * *

37. On a request for correction of clerical error under section 78(2). - 500 2,000 * *** * * *

31. It may be noted that there is no form prescribed for making a request for correction of clerical error under Section 78 of the Act. The fee prescribed is Rs. 500/- for natural persons and Rs. 2,000/- for other than natural persons.

32. The petitioner, on 02.01.2010, had given a letter requesting for correction, under Section 78 of the Act, of the clerical error in the Form 18, wherein the petitioner had mentioned the number of the Indian National Phase application as 6272/DELNP/2008 instead of 5272/DELNP/2008. It may be noted that, in the originally filed request for examination, the date of the application for grant of patent was correctly mentioned as 18th June 2008 and the description of the patent was correctly mentioned as “IRIS IDENTIFICATION SYSTEM AND METHOD USING MOBILE DEVICE WITH STEREO CAMERA”. Along with the request for correction, the petitioner also paid the requisite fee of Rs. 2,000/-.

33. Since there is no form prescribed by the Act or the Rules for seeking correction under Section 78 of the Act, even a letter would be sufficient. The petitioner along with the letter had enclosed the corrected Form 18 and the corrected covering letter. The request was made prior to the expiry of the period of 48 months. The requisite fee was also paid thereon. There is no reason as to why the Respondents should not have considered the same.

34. The reason given in the counter affidavit, that the Power of the Controller to correct clerical errors can only be exercised or made to effect, when the patent application is in examination procedure and on the date of filing of the request under Section 78 i.e. on 02.01.2010, there was no office action possible on the petitioner’s patent application, is not tenable, in view of what has been noticed hereinabove with reference to Sections 11 B, 12 of the Act and Rules 24B of the Rules.

35. If the Respondents had struck to the timelines for examination, the patent application would have been in the examination procedure. Further, a request under Section 78 is not dependent on the examination procedure or any office action on the patent application. If the request of the petitioner for correction under Section 78 had been considered by the respondents, there is no reason as to why the same was not liable to be granted.

36. The request for correction under Section 78 of the Act was made before the expiry of the 48-month period, was accompanied with the requisite fee and sought correction of what was clearly a clerical error. Thus the action of the Respondents, in not considering the request for correction, cannot be sustained.

37. The contention, that the request for correction made by the petitioner by letter dated 02.01.2010 (sic 02.01.2009) was not the proper procedure to make corrections under the Act, is also not tenable in view of what has been noticed hereinabove with reference to Section 78 of the Act. Further contention that the request for correction made on 13.02.2012 was beyond the statutory time period and by that time the patent application was already deemed to have been withdrawn under Section 11B(4) is of no consequence as by letter dated 13.02.2012, the petitioner had only reiterated the earlier request dated 02.01.2010. The letter of 13.02.2012 was not even accompanied with any fee, which fee had already been paid along with the request dated 02.01.2010.

38. Further contention that as per Section 11B of the Act any interested person, other than the applicant, can also make a request on Form 18, so there was no reason to doubt that there was any mistake or mismatch in the Form-18 submitted by the petitioner, is also not substantiated from the record.

39. Form 18 which is prescribed by the rules is as under: FORM 18 THE PATENTS ACT, 1970 (39 of 1970) & The Patents Rules, 2003 REQUEST/EXPRESS REQUEST FOR EXAMINATION OF APPLICATION FOR PATENT (See section 118 and rule 20(4)(ii), 248(1)(i)] (FOR OFFICE USE ONLY) RQ.No: Filing Date: Amount of Fee Paid: CBR No: Signature:

1. APPLICANT (S)/OTHER INTERESTED PERSON (a) NAME: (b) NATIONALITY:

(c) ADDRESS:

(d) date of publication of the application under section 11A....................

2. Statement In case of request for examination made by the applicant(s) I/We hereby request that my/our application for patent no. ____________ filed on _______ for the invention titled _______________________________ shall be examined under sections 12 and 13 of the Act. Or I/We hereby make an express request that my/our application for patent no. __________ filed on. ________ based on Patent Cooperation Treaty (PCT) application no. ________ dated _____ _ made in country _________________ shall be examined under sections 12 and 13 of the Act, immediately without waiting for the expiry of 31 months as specified in rule 20(4)(ii).

3. Statement in case of request for examination made by any other interested person I/We the interested person request for the examination of the application no. _______ dated _________ filed by the applicant _______________titled _______________ under sections 12 and 13 of the Act. As an evidence of my/our interest in the application for patent following documents are submitted. (a) ______________________________