PRABHA SRIDEVAN,CHAIRMAN - (1.) THIS appeal is filed against the rejection of a divisional application on the ground that it does not conform to S. 16 of the Patents Act, 1970.
(2.) THE learned counsel for the appellant Shri S. Majumdar submitted that in the recent orders of Intellectual Property Appellate Board (IPAB), it has been made clear that no divisional application is maintainable if there is no plurality of invention and therefore, he submitted that on merits, he may not have a case. However, he requested that he may be permitted to bring to the notice of this Board certain difficulties in the prosecution of a patent, which results in inventors seeking a division. In the instant case, the patent was applied for an invention entitled "ANTIPERSPIRANT COMPOSITIONS". The First Examination Report (FER) was issued on 11/11/2005 raising certain objections. The appellant gave their explanation. Then, a Second Examination Report was sent which was received by the inventor almost at the end of the 12 month period that is given to them under law for putting an order to the application. The learned counsel submitted that since the time for putting the application in order had lapsed and since the appellant desired to get a patent for invention, a divisional application was made. The learned counsel submitted that the Act does not provide for a Second Examination Report and further the 12 months period that is available to the patentee cannot be cut short, by the Patent Office by retaining the files for a length of time and returning it to the applicant with the Second Examination Report. He submitted that certain directions from the Board may be required.
(3.) THE time for putting an application in order for grant under S. 21 is given in Rule 24B(4). It says that it shall be 12 months from the date on which the first statement of objection is issued to the applicant to comply with the requirement. S. 14 deals with the consideration of the report of the Examiner by the Controller. S. 12 deals with examination of application and how the Examiner shall do it. S. 12(2) says that the Examiner to whom the application is made shall ordinarily make the report to the Controller within such period as may be prescribed. Therefore, from the date on which the First Examination Report is issued to the applicant, the applicant has 12 months. What has happened in the present case is, a situation where the applicant is denied the twelve months that the Law allows him. The Patent applicant shall not suffer for the time that the application spends in the IPO before the matter is taken up for hearing by the Controller. The applicant has twelve months to put his application in order for grant of patent. His application will not be examined unless he makes a request in the prescribed manner for such examination within the prescribed period (Section 11(B) of the Patents Act, 1970). The examination of the application is mentioned in S. 12. The Controller refers the application to an Examiner for making a report to him in respect of the matters mentioned in the said Section. The Examiner shall make a report under S. 12(2) within a period ordinarily of one month but not exceeding three months from the date of reference of the application given by the Controller. The First Examination Report along with the application and specification shall be sent to the applicant within six months from the date of request or within six months from the date of publication. Rule 24B(4) provides for twelve months from the date on which the first statement of objection is issued to the applicant. Therefore, it is clear that a time frame is prescribed for the Patent Office by which the Controller or the Examiner for referring the application for examination or for making the report or for disposing of the report. The time frame may not be inordinately long. S. 14 merely mentions that the communication of the gist of objection shall be made as expeditiously as possible and an opportunity should be given. Neither the Rule nor the Act speaks of subsequent examination reports. However, the very fact that the Rule uses the word First Examination Report or first statement of objection indicates that it is not the only one examination report. Further, within the twelve months period provided in Rule 24B(4), if the applicant is able to put his application in order and clarify to the Examiner any of the objections that are raised, or suitably amend claims to avoid rejection, that opportunity cannot be shut out. But if the Patent Office issues a Second Examination Report, it must be well before the expiry of that twelve months period to afford the patent applicant an opportunity to set his application in a patentable form. He may introduce limitations, he may combine the claims, he may delete the claims, in order to make his invention and patent secure. But we find frequently that the application lies in the IPO for six months and on the eve of the expiry of twelve months, provided in Rule 24B(4), the applicant is served next set of objections sometimes totally different from the earlier ones. A second set of objections seeking further clarification in respect of the original objections is understandable. But if the First Examination Report indicates obviousness in view of certain prior arts and the applicant had made what in his opinion was a reasonable explanation, he would be expecting a favourable reply. But on the 27th day of the 11th month, if a second set of objections are issued, raising S. 3(d) objection leaving less than a week to set right the application, the procedure smacks of unfairness. We are describing an extreme hypothetical situation only to drive home the issue of unfairness. It is irrelevant whether the unfairness is minimal or considerable. The Quasi Judicial authority owes a duty of fairness in action.;