REVIEW PETITION UNDER INDIAN PATENT ACT

Review Petition u/s-77 (1) (f)) of Indian Patent (amended) Act, 1970

Section-77(1) (f) of the Indian Patent (amended) Act, 1970 envisages that the applicant of a patent can make an application to review the decision of the Controller. On application made in Form-24 under the Patent (amended) Rules, 2003 any applicant may seek to review the decision of the Controller. Under this section the Controller has certain powers like those of a Civil Court to deal with certain legal matters. This section says that the controller 'shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908' and one them is reviewing Controller's own decision u/s-77(1)(f) and the application shall be made ‘within the prescribed time and in the prescribed manner’.
Rule-130(1) of the Patent Rules, 2003 provides that a patent applicant can file a Review petition before the Controller to review his decisions u/s-77(1) (f) of the Act. The application is to be made within 1 month from the date of communication of such decision to the applicant or exceeding not more than another 1 month where it is made by Form-4. Here the applicant shall set forth proper ground on which he/she has sought the review.
This issue can be discussed thoroughly by some of the relevant case judgments given below-
In Magotteaux International S.A. and Another v. Assistant Controller of Patents and Designs and Others, 2007 (Delhi High Court) case, where the petitioners had applied for a patent named ‘composite wear component’. During the pre-grant opposition the applicant sought four (4) amendments under section-78 of the patent act, 1970. However no opposition had been received by the respondent no.3. Later on the patent was granted and was ready to publish under section-43(2) of the Patent Act, 1970.
The respondent no.3 filed a review petition u/s-77(1) (f) of the Act against the said grant of amendment u/s-78. The contention of the respondent no. 3 was that, since section-78 of the Act empowers the Controller to correct some clerical error, but that does not allow the Controller to make any amendment of the patent application. The application for review subsequently has been dismissed by the Controller (respondent no.1). The said respondent no.3 filed WRIT petition before this Court and Court set aside the previous order of the respondent no.1 and remanded the case to the respondent no.1 for further review, but this has also gone in vain on technical grounds. The respondent no.3 further moved before the High Court of Delhi saying that the Controller's decision was impugned and no reason has been set forth to justify the rejection of the review petition.
The High Court of Delhi opined that the decision of the respondent no.1 was impugned and directed that the Patent Office shall publish the granted patent with 4th amendment. For the disputes regarding other three (3) amendments it is open to the petitioner to move an appeal under section-117A in respect of the disallowance of the three amendments.
In another case Michigan State University, E.Lansing, USA v. The Assistant Controller of Patents, Patent Office, Delhi Branch and The Controller General of Patents, Trademarks, Designs and Geographical Indications, Patent Office, Mumbai Branch (2008, IPAB-Chennai), where the appellant filed a patent application titled 'Transgenic Plants Producing Polyhydroxyalkanoates' (for a ‘gene expression cassette’) and subsequently this was granted by the Patent Office, Delhi. During the examination process two divisional patents have been filed based on the first patent application. One of the divisional applications was the subject matter of this case. During the examination process the examiner objected the divisional application on the ground that it does not satisfy the definition of an invention envisages u/s-2(1)(j) of the Patent (amended) Act, 1970 and it falls under the non-patentable subject matter as defined u/s-3(b) and 3(j).Later on the applicant filed the amended version to the Patent Office and again the Assistant Controller after examination rejected the application on the ground that it is not satisfying section-2(1) (j) of the Patent Act, 1970.
Aggrieved by this impugned order of the Controller of Patents, the appellant filed the review petition u/s-77(1) (f) before the Assistant Controller over the same divisional application that is being rejected by the said Assistant Controller on the ground that the applicant has not been complied with the requirements of the patent office and it is deemed to have been abandoned u/s-21(1) of the Patent Act.
The appellant filed an appeal before the Delhi High Court by contending that the decision of the Assistant Controller was impugned that violates well settled proposition of law and no reason has been set forth why the patent is abandoned. The High Court transferred the case u/s-117G to the Intellectual Property Appellate Board (IPAB), Chennai.
The IPAB opined that “We are not satisfied that the order of abandonment is sustainable. Having stated in the impugned order that the subject matter and claims are not patentable under section-2 (1) (j) the reasons in support thereof ought to have been stated, instead of relying upon abandonment under section 21 (1). The impugned order for the said reasons is not sustainable. We are, therefore, of the view that this divisional application for patent be remanded back to the Patent Office with a direction that the learned Controller of Patents shall offer an opportunity of hearing to the party as per the provisions of law and then decide the matter in accordance with the law. The appeal is allowed in part, in terms as above”.