Bombay High Court: The present petition is an appeal under the provisions of Section 117-A of the Patents Act, 1970 (‘the Patents Act’) impugning the Order dated 16-8-2021 passed by the respondent. A Single Judge Bench of Firdosh P. Pooniwalla, J., held that since the petitioners have not complied with the requirements of the First Examination Report (‘FER’) within the time prescribed, the provisions of Section 21(1) would be applicable and therefore, the impugned Order has been correctly passed under the provisions of Section 21(1) and not under Section 15. The Court therefore dismissed the petition as being non-maintainable under the provisions of Section 117-A of the Patents Act.
Background
The petitioners had filed a patent application which was refused by the respondent as he considered that the application shall be deemed to have been abandoned as the petitioners had failed to comply with the requirement of Section 21(1) of the Patents Act. Aggrieved by this order, the petitioners filed the present petition challenging the order of the Controller.
Counsel for respondent, raised a preliminary objection that the present petition was not maintainable and submitted that Section 117-A did not provide for an appeal against an order passed under Section 21(1) of the Patents Act. It was further submitted that, since the impugned order was passed under Section 21(1), the present appeal was not maintainable.
Observations
The Court opined that it was clear from the provisions of Section 117-A that no Appeal lies against an Order passed under Section 21(1) of the Patents Act. The Court agreed with the submission of Counsel for respondent that, since the Order dated 16-9-2021 itself showed that it has been passed under Section 21(1) of the Patents Act, this Court would have to hold that it has no jurisdiction to entertain an appeal against the same under the provisions of Section 117-A as Section 117-A does not provide for an appeal against the said Order.
The Court also agreed with the submission that it is not open for an Appellate Court, like this Court, to consider whether the order would fall under the provisions of Section 15 of the Patents Act once the order clearly showed that it falls within the provisions of Section 21(1) of the Patents Act. Therefore, the Court held that the petition may not be maintainable.
The Court noted that the reply dated 24-12-2019 of the petitioners did not comply with all the requirements as it showed that, except in respect of the requirement regarding inventive step, in respect whereof the petitioners have made some comments, the reply does not at all deal with the other requirements of the FER.
The Court observed that the petitioners did not seek extension of time for complying with the requirements of the FER. Thus, the impugned Order clearly holds that the petitioner is deemed to have abandoned the application and that it has failed to comply with the requirements of Section 21(1) of the Patents Act. Therefore, the impugned Order refuses to proceed with the application for a Patent of the petitioners.
The Court held that since the petitioners have not complied with the requirements of the FER within the time prescribed, the provisions of Section 21(1) would be applicable and the impugned Order has been correctly passed under the provisions of Section 21(1) of the Patents Act and not under Section 15 of the Patents Act, as alleged by the petitioners.
The Court relied on Telefonaktiebolaget LM Ericsson (PUBL) v. Union of India, 2010 SCC OnLine Del 1086 and Merck Serono S.A. v. Union of India, 2014 SCC OnLine Del 1825 and opined that if the applicant complies with all the requirements imposed on it under the Patents Act, then the basic factual condition for attracting the deemed fiction of abandonment in terms of Section 21(1) would be non-existent, i.e., the case would not fall under Section 21(1) of the Patents Act.
Thus, the Court dismissed the petition for being non-maintainable under the provisions of Section 117-A of the Patents Act.
[Sonalkumar Sureshrao Salunkhe v. Assistant Controller of Patents, 2024 SCC OnLine Bom 1260, decided on 6-5-2024]
Advocates who appeared in this case:
For the petitioner- Advocate Hiren Kamod, Advocate Anees Patel, Advocate Prem Khullar, Advocate Aditya Chitale, Advocate Prashant Shetty i/b R.K. Dewan Legal Services
For the respondent- Advocate Abhishek Bhadang and Advocate Carina Xavier
