By Johny Solomon Raj and Swaraj Singh Raghuwanshi
The Office of Controller General of Patents, Design and Trademarks (CGPDTM) issued three public notices on January 16, 2023, which is in supersession of the previous public notices issued on December 26, 2022. The notices issued by the CGPDTM are regarding the timelines and compliances for patent hearing.
Person authorized to attend Patent 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.
The Office of Controller General of Patents, Design and Trademarks (CGPDTM) reiterated the concern issued in the previous notice issued on December 26, 2022, wherein the CGPDTM raised a concern that person who are neither a patent agent nor authorized by the applicant or any concerned party are attending hearing and making communications before the Controller of Patents.
The CGPDTM notified that in such a scenario, an appropriate action will be initiated as per the provision of Section 123 of the Patents Act (which prescribes pecuniary punishment) against the concerned person taking part in proceedings before the Controller of Patents and making communications with the Controller.
Hearing compliance for advocates who are not patent agents
The CGPDTM in its previous public notice issued on December 26, 2022. notified 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 concerned party.
However, the CGPDTM clarified in its recent public notice (issued on January 16, 2023) that an advocate, not being a patent agent, can take part in the hearings/proceeding before the Controller provided that he is duly authorized by the applicant or the party concerned by filing Form 26 in his favour, without been mandatorily accompanied with the applicant or the concerned party.
Adjournment of Hearing:
The CGPDTM in its previous public notice notified that it was observed by the Patent Office 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 further 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.
However, the CGPDTM clarified in its recent public notice that it is not mandatory to file documentary evidence (if any) in the request for adjournment. Though, applicants are still required comply with the Rule 129A of The Patents Rules, 2003 (as amended) and shall mention the “reasonable cause” while requesting for the adjournments, and no such adjournments shall be entertained unless a “reasonable cause” is specified in the adjournment”.
Pre/Post Grant Opposition Hearings in Patents:
The CGPDTM in its previous public notice informed that due to high number of pending patent applications awaiting disposal, an exercise of providing a time period of four week for the hearing from the date on which the hearing intimation/notice is issued and a practice of providing a time period of ten days from the date of issuance of the hearing intimation/notice as prescribed in Rule 129 will be followed by the Controller of Patents.
However, the recently issued public notice in supersession of the preceding public notice dated 26th December, 2022 stressed on the long pending matters with the IPO, wherein a bulk of patent applications with/without pre-grant opposition or post-grant opposition are pending for final disposal. The notice further elucidated on the time period for adjournment of hearings by re-iterating Rule 129 and 129A of the Patent Rules, 2003, wherein Rule 129 reads that “before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to a proceeding adversely, the Controller shall give such applicant or party, a hearing, after giving him or them, ten days notice of such hearing ordinarily”; and Rule 129A reads that “no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days”. Thus, based on the joint reading of the Rule 129 and 129A, it can be concluded that at least ten working days are the inner limit and thirty days are the outer limit in respect of hearings and adjournments.
Furthermore, in order to accelerate the disposal of the aforementioned long pending matters, the CGPDTM decided to streamline the issues relating to hearings and adjournments, considering the huge public interest involved and also the advantages of the patent rights conferred by Chapter VIII of the Patents Act, 1970. The current notice also states that in the matters involving insignificant procedural issues, the patent office will make an effort to provide a shorter time period, while in practical matters related to analysis of prior arts, claim construction etc., a longer time period would be provided in agreement with the Act and Rules.
It is further stated in the said notice that:
(i) a fair opportunity to guard would be provided to the parties in accordance with the principles of natural justice; and
(ii) an opposing action would not be taken exclusively on the basis of the aforementioned public notice.