Case study of Madras High Court Judgement on the Requirements of Foreign Patent Filing Permission
In the
SELFDOT TECHNOLOGIES OPC PVT LTD v. Controller of Patent Chennai, the Hon’ble
High Court of Madras speaking through Mr Justice Senthil Kumar Ramamurthy held
on 28th November 2023 that the requirement of foreign filing permission under
section 39 of the Patents Act is formal and procedural in nature and hence
condonable. By its final order, the High Court directed the Madras Patent
Office to receive afresh an application for Foreign Patent Filing permission
and allow the same on appropriate terms.
Actually, the Patent Application in question is an application for a Patent of Addition. The original
application was filed in the Indian Patent Office which was duly followed up by
an American Patent through PCT route. The ostensible reason for having this
requirement of Foreign Patent Permission is to enable the Union of India to
issue secrecy directions under Section 35 of the Patent Act (hereinafter IPA)
so that those inventions relating to defence and atomic energy are not unduly
publicised around the world. As and when an Indian Patent Application is filed
by a person resident in India, 6 weeks is granted to the Patent Office to
decide whether an application must be brought under the Secrecy Directions so
that these applications are not published. These Secrecy Directions are not
permanent and capable of being reviewed as provided for under section 36 of IPA.
If a person is denied or delayed patent protection on account of secrecy
directions, the Union government is expected to provide solatium. As far as I know, there has never been a single case
where the applicant who was subjected to Secrecy Directions was ever given this
solatium. After 6 weeks, if no secrecy direction is issued, the Indian
applicant can file patents around the world, without applying for foreign
patent filing permission.
Not many
Asian countries have this foreign patent filing permission requirement. Sweden
requires that in respect of all inventions that originate within its
territories require Foreign Patent Filing Permission. United States demands
that if foreign patent applications are to be made by persons resident in the
US without first filing a US patent application should obtain this
permission. The US Patent Office has 6
months time to grant or refuse the permission. The corresponding waiting period
in India is 6 weeks from the date of the first Indian filing. Indian Patent
Office normally disposes of this application for foreign filing within a month
of the receipt of the request of this permission. As a Patent Law practitioner
in India, I have always felt that this Foreign Patent Filing permission is an
unnecessary bottleneck that reduces the freedom of action of Indian innovators.
Non-compliance with this requirement is a punishable offence and under section
118 of the Patent Act. The violator of this requirement can face imprisonment
up to 2 years. Mercifully, insofar as I am aware Patent Office has not
initiated such prosecutions. Hence, no one has been convicted for the violation
of this technical offence. Surely, these
offences do not carry any moral turpitude. It is interesting to note, that
countries like Japan and South Korea which are among the biggest filers for
global patent applications, do not have this requirement. On average, about 300,000 inventions are
sought to be patented around the world. The US and Chinese Patent Offices
receive the maximum number of Patent Applications. In India, less than 60,000 inventions are sought
to be patented and of late the number of patent filings by Indian residents is
on the increase.
Table
1. Intellectual Property Report 2021-2022. Page 19
Figure 1. Intellectual Property Report
2021-2022. Page 23
We can
understand the US having such a law in their statute book because the USA
remains the hotbed for industrial/defence-related innovations. India at best is
a marginal player in the global patenting scene. Hence, subjecting Indian
innovators to the Foreign Filing requirement and denying them patents on areas
relating to defence/atomic energy does not make any business sense. Even in
India today there is a growing realisation that it will be in the best
interests of India to open up even atomic energy and defence manufacture to
private players including foreign entities. After all, not all the foreign
patent applicants are subjected to this obligation under their respective
regimes.
In effect,
the High Court implemented the Doctrine of Factum
Valet. (Factum valet is a legal doctrine that classifies formalities into 2
types. They are:
(i)Formal
requirements
(ii)Essential
requirements.
Non-compliance
with the formal requirements is condonable. Non-compliance with essential
requirements is not condonable.) Though the Madras High Court has not
specifically relied on this doctrine to reverse the order of the Controller of
Patents, in my opinion, this doctrine will apply to this case on all fours.
Considering the facts of the case, the application in question is for a Patent
of Addition. The main patent application was first filed in India and the
Office of the Controller of Patents had full information about the innovation.
The Patent Office did not issue any Secrecy Direction with respect to the main
application as it did not come under the regulated areas, namely defence or
atomic energy. Since the main patent application is an open-category
application, it is evident that the Patent of Addition automatically falls
under the same category. Even under the Patents Act, the term of the Patent of
Addition will expire along with the main patent. Hence, it is logical to infer
that the Foreign Patent Filing Permission received by the applicant in respect
of the main patent (if the Indian Patent Office does not issue a secrecy
direction within 6 weeks, then all India resident's applications receive
permissions for foreign patents filing by implication). Thus, the letter and
spirit of sections 35 and 39 requirements have been complied with. In my
opinion, the Judgement is correct and relief oriented even though it condones
the violation of a statutory requirement. The Judgement is definitely patent
applicant friendly and has prevented a miscarriage of justice to the patentee.
However, in my opinion, the very existence of these provisions made the IPA
unfriendly to the Indian innovators who have hitherto shown a distrust for the
Indian Patent System which was justifiably perceived to be patentee unfriendly.
Hence, it will be in the best interest of Indian patent jurisprudence to do
away with this requirement by legislative initiative. We have to recognise that
the patent office is not totally wrong in denying registration to the applicant
for patent of addition because the words employed in section 39 make the
Foreign Patent Filing permission a mandatory requirement and the Office of the
Controller is bound to implement the Statute.
We will have to wait for the decision of the Controller on this point.
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