The Hon’ble High Court of Delhi in a recent order in a writ petition held that where an Indian National Phase Application has been filed prior to the Patent [Amendment] Rules, 2016, the unamended Rule 138 shall be invoked and not the amended Rule 138. It is pertinent to mention here that the amended Rule 138 incorporates Rule 20(4)(i) as an exception i.e. the amended Rule 138 cannot be invoked by the Controller to condone any delay in filing national phase application.

The Court further held that prior to the amendment of Rule 138 applications for extensions or condonation of delay sought under the 2003 Rules, were treated, as an irregularity under Rule 137.

The Court has held that where a request for examination of the patent application has been made before the expiry of the prescribed time period and is returned only for the reason that the fees is not paid in the prescribed mode and manner and such order has been complied by the petitioner. The request shall be deemed to have been filed within the prescribed time period.

In the instant case, the petitioner filed an application for grant of patent in India corresponding to PCT/FR/2014/050623. The petitioner entered the Indian National Phase on 06^th November, 2015 while the prescribed time period of 31 months for filing the Indian National Phase Application ended on 20^th October, 2015. In light of delay the petitioner filed petitions under rule 137 and 138.

The first issue to be adjucated by the Hon’ble Court was whether the sustainability of application filed on behalf of the petitioner to enter the Indian National Phase under Rule 20(4((i) of the Patent Rules would be examined in light of amended as against unamended Rules.

The amended rule 138 confers power on the Controller to extend time period for a period of one month for condoning the delay in doing any act or taken any proceedings, provided such request is filed prior to the expiry of the prescribed time period. The amended Rule 138 excludes certain deadlines that cannot be condoned under said rule, one of such deadline being rule 20(4)(i) which stipulates time period for filing National Phase Application as being 31 months.

The difference between amended and unamended rule 138 is that the unamended rule 138 does not exclude rule 20(4)(i). The court held that since the National phase application was filed by the petitioner prior to the Patent [Amendment] Rules, 2016, the unamended rule 138 shall be invoked and the Controller has powers to condone delay in filing the National Phase Application within the prescribed time period. Therefore in such case an irregularity for which there is no special provision in the Act can be corrected under Rule 137. Rule 137 confers powers to the Controller to correct any irregularity in procedure. It is for this reason that the petitioner has filed petitions both under rule 137 and 138.

The second issue adjucated by the Court was whether the Controller ought to have processed the request made by the petitioner for examination once the requisite fee was paid by it in the prescribed mode.

In this case the request for examination was filed by the petitioner along with a prescribed fee in the form of banker’s cheque. The Controller rejected said request on the ground that the same was not made in the prescribed mode and manner. The Act requires the Applicant to pay fees only be paid via Demand Draft/ Banker’s Cheque or Cash and transmitted via electronic mode. This communication asking the petitioner to pay the fees by correct mode reached the petitioner only after the expiry of due date of filing the request for examination and the petitioner thereafter within a matter of less than a week paid the fees via the prescribed manner and mode. The Controller rejected the request again on the pretext that the subsequent payment was received after the stipulated time period. The Court held that the Controller erred in rejecting the request for examination for failure of complying with the statutory time limit of 48 months, for the reason that the request was actually made before the expiry of said time limit and was only returned for the reason that the fees was not paid in the prescribed mode and manner. Further, since the first communication rejecting the request was received by the petitioner only after the expiry of stipulated timer period, steps to correct the same could only be taken thereafter. As a result, the Court directed the Controller to take request for examination on record and process the same in accordance with the Act.