News & Updates

November 9, 2018

Condonation Of Delay In Previously Entering National Phase Is Mere Curing of Irregularity

In Snecma V. Union of India & Anr., W.P.(C) 3250/2017 & C.M. No.26210/2017, while allowing the writ on 2018.3.19, a Ld. Single Judge (Shakdher, J.) of the Delhi High Court has dealt with the scope of Rules 137 and 138 of the Patents Rules, 2003 as they stood prior to the amendment in 2016.

India National Phase Application “Blade and Blade Dihedral Angle”, under Chapter III of the Patent Rules, 2003 was entered on 2015.11.6 claiming priority from its French parent dated 2013.3.20. This filing was accompanied with petitions under Rule 137 and 138 of the Patents Rules, 2003 for condonation of the delay in filing. The National Phase was not filed within the statutory period of 31-months from the date of priority as per Rule 20(4)(i) falling in Chapter III of the Patent Rules, 2003. The writ petition itself was against the Request For Examination (RFE) being treated as time-barred.

The case involves the question whether the scope of the Saving expressly stipulated in the unamended Rule 138 of the Patents Rules, 2003 “Save as otherwise provided in the chapter III…the time prescribed…for doing of any act…may be extended…for a period of one month, if he thinks fit…upon such terms…”, read with Rule 137, applies to the time-period permissively prescribed for filing a PCT National Phase in Rule 20(4)(i) falling in Chapter III, or not. Rule 137 provides in relevant part: “…any irregularity in procedure…in the opinion of the Controller may be obviated without detriment to the interest of any person, may be corrected…upon such terms…” The question, therefore, was whether the power to condone the delay beyond the 31-month period is unavailable for being within the Saving-restriction preface of the unamended Rule 138 or is such power, instead, outside the scope of the Saving and hence within the competence of the Controller under the unamended Rule 138 read with Rule 137.

The Court decided that the Controller did have the competence and power to condone the delay. It explained the wider scope of the Rules along with the narrower scope of the Saving:  “…if the Controller reaches a conclusion that an amendment could be ordered in a document qua which there is no special provision in the Act or any irregularity in procedure could be obviated, he may order correction without causing detriment to the interest of any person on terms thought fit by him. It is precisely for this reason that on behalf of the petitioner applications have been filed both under Rule 137 and under the unamended Rule 138.”  

Prior to the amendment in 2016 of Rule 138, an application thereunder for extension of expired time limit for entering national phase, amounting to condonation of delay beyond the time period prescribed under the relevant provision of the Patent Rules, 2003, was thus treated as allowable. It was also treated as inherently being under Rule 137 for curing and obviating a mere irregularity.

This is made clear by the Court: “…the applications for obviating irregularity were maintainable and the limitations contained in unamended Rule 138 had no application qua provisions other than those referred to therein.”

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