By Renu Bala Rampal and Shantanu Mishra
The Office of Controller General of Patents, Design and Trademarks (CGPDTM) issued three public notices on December 26, 2022, regarding the timelines and compliances for patent hearings.
Persons authorized to attend Hearings
As per Section 128 and Section 132 of The Patents Act, 1970 only authorized patent agents and advocates are entitled to represent their clients in hearing/proceeding in respective matters before the Controller of Patents.
However, the Office of Controller General of Patents, Design and Trademarks (CGPDTM) raised concern that some persons who are neither patent agents nor authorized by the Applicant or any concerned party are attending hearing and making communications before the Controller of Patents. CGPDTM further observed that usually such persons are either employees of patent agents or law firms.
CGPDTM notified that appropriate action will be initiated as per provision of section 123 of the Act (which prescribes pecuniary punishment) against the concerned person making such communication and the patent agent or law firm who have employed that person, if it is found that the person has acted on the direction of the patent agent or law firm.
Hearing compliance for Advocates who are not patent agents
It has been clarified in the public notice that an Advocate, not being a patent agent can take part in the hearing/ proceeding before the Controller provided that he is duly authorized by the Applicant or the party concerned by filing Form 26 and ensuring that he is accompanied with the Applicant or the party concerned.
10 Days notice for hearing
The CGPDTM notified that due to large number of pending patent applications awaiting disposal, the practice of giving four weeks time for hearing date from the time of hearing intimation/notice is now dispensed and earlier practice of giving 10 days time for hearing date from the time of hearing intimation/notice as prescribed in Rule 129 will be followed by the Controller of Patents with immediate effect. This step has been taken in the public interest involved in timely disposal of applications and benefits of patent rights conferred upon the Applicants.
Adjournment of hearing
The office noted that the Applicants are not complying with the rule 129A of The Patents Rules, 2003 (as amended) and requesting adjournments without mentioning the “reasonable cause”. The office notified that the request for adjournment filed without mentioning “reasonable cause” shall not be entertained and requested the stakeholders to specify the “reasonable cause” along with documentary evidence (if any) in the request for adjournment.
Also, no party shall be given more than two adjournments and each adjournment period shall not be more than 10 days.