PRABHA SRIDEVAN,CHAIRMAN - (1.) THE appellant is aggrieved by the rejection of his PCT application on the ground that it is not in proper format and the fees paid is insufficient. The appellant re -submitted the application which was rejected on 4.5.2011 and a subsequent order dated 27.12.2011 on the ground that the 31 months period prescribed had lapsed. This appeal has been filed challenging the order and seeking a direction to the respondents to take on file the application.
(2.) SECTION 138 (4) of the Patents Act, 1970 (Act in short) provides that the PCT application designating India will have the effect of filing an application for patent u/ss 7, 54 & 134 and the title, description, claims, abstract and drawings, if any, filed in the International application shall be taken as complete specification for the purposes of this Act. Section 139 provides that all the provisions of this Act will apply to a convention application. Therefore the appellant was bound to file the complete specification as he had filed in the International application. This application contained 20 claims. According to First Schedule(Rule 7 of the Patents Rules (Rules in short) a fee of Rs.1000/ - is prescribed for Form 1 and an additional fee of Rs.200/ - for each claim in excess of 10 claims is to be paid. Therefore the appellant herein ought to have paid a fees of Rs.3000/ -. (1000+200x10). The fees paid by him were adequate for only 17 claims and not 20 claims. The application filed by him including Form 1 & 2 were presented on 4.2.2011, which was before expiry of the 31 months period. Therefore the filling was in accordance with law. The Controller had returned the application on the ground that the fees were insufficient.
(3.) THE learned counsel for the appellant submitted that u/s 15 of the Act, the Controller had the discretion to either refuse the application or require that application, specification or other documents to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so. According to the learned counsel, the Controller had failed to excise the discretion vested in him and that he ought to have called upon the appellant to rectify the defect. The learned counsel submitted that if the Controller had informed him that the fees was inadequate and whether the appellant was willing to amend the claim, the appellant would have immediately deleted 3 claims and the fees paid by him namely Rs.2500/ - would have been adequate for examination of 17 claims. The learned counsel submitted that u/s 57(6), the appellant had the right to amend his specification in compliance of the Controllers direction and this right could not be watered down by the time limit prescribed in the rules. The learned counsel also referred to Rule 20 which provides that the appellant in respect of an International application shall pay before the time limit prescribed in sub rule 4(i), the National fee and other fee to the Patent office, Rule 4(i) prescribes period of 31 months. The learned counsel submitted that since the application has been presented in time. The time limit for payments under Rule 20 would be directory and not mandatory. The learned counsel submitted that there may be an arithmetical error in the computation of fees or a misinterpretation of the entries due to sheer inadvertence and such inadvertent error cannot result in the patent application being shut out at the threshold.;