CMTE Development Limited Vs. The Controller of Patents & Designs

  1. Honourable Judges: Ms. S. Usha, Vice-Chairman and S. Chandrasekaran, Technical Member
  2. Issue: Patents Act, 1970 – Section 15; Trade Marks Act, 1999 – Section 92; Intellectual Property Appellate Board (Procedure) Rules, 2003
  3. Date of Judgement: 30/12/2010
  4. Case No: COD No. 5/2009 in S.R. No. 399/2009/PT/IPAB
  5. Counsel: For Appellants: Mr. Francis Groser, Advocate and Mr. A.P. Jyothish, Advocate
  6. Cases Referred: N. Balakrishnan Vs. M. Krishnamoorthy, 1998 (7) SCC 123 = 1999 (1) LW 739; G. Ramegowda Vs. Special land Acquisition Officer, AIR 1988 SC 897

Order:

S. Chandrasekaran, Technical Member, (At New Delhi)

1.This petition is for condoning the delay in filing an appeal under section 15 of the Patents Act, 1970 (hereinafter referred to as the Act) by the appellant M/s. CMTE Development.LTD., an Australian company, located at Bldg. No. 101, UQ 89s PINJARA HILLS, CAMPUS 2436 MOGGIL ROAD, PINJARA ROAD, QUEENSLAND 4069, Australia.

1. The application for Patent by way of National Phase has been filed in the Patent office at Delhi on 19th April 2005 and numbered as 1562/DELNP/2005 (hereinafter referred to as the subject application). The subject application was duly examined and the first examination report was issued giving the stipulated time to comply with the requirements, by the respondent. The appellant had filed the documents after complying with the requirements, simultaneously amending the claims but the respondent having found them not in order for grant of Patent finally refused the patent under section 15 of the Act after offering an opportunity of hearing to the appellant.

2. The appellant filed an appeal before the Hon”ble Appellate Board on 29th September 2009 after the expiry of the appeal period together with an application for condoning the delay of about month and a half. The said appeal was beyond the limitation period and hence the application was numbered as C.O.D 5/2009 and was listed before the bench on 2nd August 2010 for the condonation of the delay. The Registry of this Board issued notice to the respondents directing them to file their statement, if any, as to why this C.O.D in the appeal should not be allowed, but there was no reply from the respondents.

3. The appellant appeared before us on 2nd August 2010 through their counsel Mr. Francis Stewart Groser assisted by Mr. A.P.Jyothish and the respondent was not represented.

4. The counsel for the appellant first narrated the facts of the case, including the communications that took place between the appellant and the patent office and finally the offering of the opportunity of hearing by the Controller under section 14 of the Act. The counsel then submitted that the appellant appeared before the Controller and then the Controller passed the impugned order under section 15 of the Act after a delay of almost more than a year. The counsel also submitted that the Controller had failed to appreciate the logic of the detailed arguments submitted by the appellant, from which the inventive step of the present invention is apparent. The counsel for the appellant further submitted that the Controller had rejected solely on the ground of lack of inventive step even though the first and only examination report to issue on this application had objected to the method claims for reason of “lack of inventive ingenuity,” an expression which is not to be found in the Indian Patents Act, 1970 to designate any ground of refusal of a patent application and also pointed out that the respondent himself has agreed that the invention claimed is novel and possessed industrial applicability in the impugned order. Further the counsel submitted that as soon as the order was received, it was conveyed to the appellant, who had the necessity to convene a board of Director”s meeting to take the prior approval of local government and also sanction for funds for incurring such expenditure, which took a considerable time and delay. The counsel stated that the same was received only on August 6th 2009 and then immediately they had to ask the Patent office for a certified copy of the impugned order, but on this issue the Patent office delayed for more than 40 days during which the appeal period had expired. The counsel further stressed that this delay in possession of the certified copy is the reason for the delay which caused the appeal to be filed beyond the period of limitation allowed as well as the appeal time allowed in the Patents Act, 1970. The counsel further argued that the matter was quite clear to them that the impugned order may be contested by filing an appeal before this Hon”ble Appellate Board within the statutory time limit of three months from the date of the order, but he continued that all these delay was mainly due to the inordinate delay caused by the Patent office Delhi in issuing a certified copy, to prove that the impugned order is erroneous in law, frivolous and baseless, inspite of the fact that the appellant had given clear observations and details and evidences to prove the invention is having the inventive step. The counsel submitted that those detailed observations and evidences in support of the averments are vital to the proceedings before the Hon”ble Appellate Board in view of the erroneous refusal order by the Controller of Patent. The counsel said that the Patent office took lot of time to issue the certified copy and it was the reason for the delay in filing the appeal, but the delay was not intentional, but occasioned due to circumstances beyond the control of the appellant and pleaded that this delay of more than a month may kindly be condoned and the appeal may be taken on record.

5. The counsel for the appellant further submitted that despite the IPAB procedural rules in respect of patents have not been made yet, the power still exists with the Hon”ble Appellate Board to consider this petition for delay in view of the provisions contained in sections 116 and 117B of the Act read with the provisions contained in section 92 of the Trade Marks Act, 1999, wherein the IPAB procedural rules for Trade Marks have already been formed and is in force. Then the counsel also referred to the following case laws of the Hon”ble Supreme Court and pointed out the relevant portion of the judgments, that how this unavoidable delay can be condoned and also how the IPAB is empowered to do so, by relying on these Supreme Court Judgments.

a. (1986) Vol.4 SCC 667 at page 673 Para 6

b. (2003) Vol.10 SCC 421 at page 430 Para 15

c. (1999) Vol.8 SCC 99 at page 104 Para492

d. (2009) Vol.8 SCC 492 at page 502 Para 23

e. Jt. 1996(4) 414 State of UP & Ors Vs. Harish Chandra & Ors. At page 3

f. N. Balakrishnan Vs. M. Krishnamoorthy — Supreme Court Case at page 2 — 1998(7) SCC 123 = 1999(1) LW 739

g. C.O.D. No.4/2007 in S.R. No.187/2007/TM/IPAB — Shri Shyam Singh Vs. Manohar Sing & Ors.

h. J&K LP 117 High Court of Jammu & Kashmir — State of Jammu & Kashmir & Ors. Vs. Ghulam Rasool Rather — CMP 1/1997

i. M.P. No.31/2008 in R.P. No.1/2009 and TRA/23/2005/TM/MUM Societe Des Produists Nestle S.A. and Nestle India Ltd. Vs. Swaraj Industrial & Domestic Appliances Pvt. Ltd. & Ors.

The Counsel further added that the section 5 of the Limitation Act read with section 29(2) also applies and this Hon”ble Appellate Board has the power to condone the delay and take the appeal on record for further adjudication in this matter.

6. We have heard the arguments of the counsel for the appellant. It is a fact that the impugned order is made under section 15 of the Act and the same is appealable before this Appellate Board. It is also a fact that as per section 117A(4) of the Act, the appeal has to be made within three months from the date of the order of the Controller or within such further time as the Appellate Board may, in accordance with the rules made by it allow. It is correct that there are yet no procedural rules made ready for the patent cases, but there is present, the IPAB procedural rules for the Trade Marks and invoking the powers vested under the section 92 of the Trade Marks Act, 1999 together with the provisions available under sections 116 and 117B of the Act, this petition for the condonation of delay can be considered and time for filing the appeal can be allowed.

7. As stated by the appellant”s counsel, in N. Balakrishnan Vs. M. Krishnamoorthy — 1998(7) SCC 123 = 1999(1) LW 739, it was held that “the primary function of a court is to adjudicate the dispute between the parties and to advance substantial justice. Time limit fixed for approaching the Court in different situations in not because on the expiry of such time a bad cause would transform into a good cause. Rule of limitation are not meant to destroy the rights of the parties. They are meant to see that parties do not resort to dilatory tactics, but seek their remedy promptly. The object of providing a legal remedy is to repair the damage caused by reason of legal injury”. The appellants counsel had submitted that there is a legal injury caused by the Patent office in furnishing the certified copy of the impugned order after an inordinate delay of more than a month, which time delay that occurred was not in their hand and for such time lapse, the appellant does not have any particular reason to show or prove why the certified copy was furnished by the Patent office with such delay. In view of this aforesaid Supreme Court case, it is clear that the delay caused was not due to the appellants act and hence the delay can be condoned.

9. The counsel for the appellant also relied on the High Court of Jammu & Kashmir decision in State of Jammu & Kashmir and Ors Vs. Ghulam Rasool Rather — (2001) 1 J&K Law Reporter 117 wherein the Chief Justice while writing the judgment referred to the Supreme Court case G. Ramegowda Vs. Special land Acquisition Officer AIR 1988 SC 897 regarding expression ”sufficient cause” must receive a liberal constrution so as to advance substantial justice. The counsel referred to Intellectual Property Appellate Board (Procedure) Rules, 2003 in respect of Trade Marks and submitted that on receipt of the impugned order, the appellant has been informed and they had to convene the Board of Directors meeting to get the local government approval and the budget sanction for this expenditure on this litigation and the whole process was over within a period of one month to two months time. The counsel further submitted that, had the certified copy of the impugned order been furnished by the Patent office, Delhi, in time within the stipulated time of three months appeal period, the appellant would have filed the appeal without any wastage of time. But it is apparent here that inordinate delay is caused by the patent office in furnishing the certified copy to the appellant so as to enable him to enclose the said certified copy along with the appeal to the Hon”ble Appellate Board and this is the “sufficient cause” justifiable for the delay caused not by the appellant action but due to the bureaucratic action of the Controller”s office in Delhi and this delay of more than a month can be condoned considering the Supreme Court case cited herein.

10. The counsel also referred to the IPAB judgment in M.P.31/2008 for Condonation of Delay and also another judgment of IPAB in Condonation of Delay in S.R.No.187/2007. Thus the counsel”s request for the condonation of delay in filing the appeal is found to be in order and deserves the application of Natural Justice, thus making the Hon”ble appellate Board to pass orders for taking the appeal on record and finally render justice.

11. As per the appellant”s counsel reliance on the Supreme Court case, Jt. 1996(4) 414 State of UP & Ors Vs. Harish Chandra & Ors. at page 3 wherein, it was held that “it is undoubtedly true that the applicant seeking for Condonation of Delay is duty bound to explain reasons for the delay but as has been held by this court in several cases, the very manner in which bureaucratic process moves, if the case deserves merit the Court should consider the question of condonation from that perspective.” It is a fact from the appellant”s counsel narration regarding the sequence of happenings for the appeal before the Hon”ble Appellate Board, there has been prompt communication and advice to the appellant from the constituted attorney as soon as the impugned order was issued. It is also noticeable that the applicant company had to get the prior approval of the government by convening the Board of Director”s meeting and the budget sanction for such litigation purposes. All these process has been completed within the appeal period and they have informed their counsel to take further action and the counsel also has requested for certified copy from the patent office Delhi, but there has been inordinate delay in furnishing the certified copy which is to be enclosed along with the appeal before the Hon”ble Appellate Board. This certified copy having been issued with such inordinate delay, the appellant has been forced to file the appeal beyond the said stipulated period of time meant for the appeal. In view of this Supreme Court case, it is clearly noticeable that the delay was not due to action of the appellant or in other words, the appellant was not instrumental to this delay and hence, we are inclined to take a lenient view about this delay in filing the appeal and condone the delay occurred accordingly.

12.. In the Supreme Court Case N. Balakrishnan Vs. M. Krishnamurthy 1998 (7) SCC 123 — 1999 (1) LW 739, it was held that, “court knows that refusal to condone delay would result foreclosing a suitor from putting forth his cause.” The judge has also held that, “length of delay is no matter, acceptability of the explanation is the only criterion.”

13. Applying these above principles we notice that the delay is not caused by the action of appellant but the delay is due to the opposite party namely, the respondent in furnishing the certified copy which is to be enclosed by the appellant alongwith the appeal. We also noticed the reasons given for the delay is very clear and the explanation offered by the appellant for the delay shows, the bonafide intention of the appellant. Hence in the interests of justice, we are inclined to condone the delay and the petitioner praying for the same in filing the present appeal is allowed and the Registry is directed to number the appeal if in order and proceed further to list the same before this bench as and when the matter is matured for hearing.

HELD:

Appeal allowed.

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