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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Agrivida Inc - Appellant
Versus
Union of India and the Controller General of Patents - Respondent
W.P.(C)-IPD 84 of 2021
Decided On : 23-05-2022
| Table of Content |
|---|
| 1. challenge to prohibitive fee structure. (Para 2 , 4 , 5 , 8) |
| 2. petitioner's inability to file due to fees. (Para 9 , 11) |
| 3. compliance with pct regulations. (Para 10) |
| 4. amendments reducing fees and enabling filings. (Para 12 , 13 , 14) |
| 5. respondent's stance on retrospective application. (Para 15 , 16) |
| 6. impact of writ petition highlighting fee issue. (Para 17 , 18 , 21) |
| 7. national phase entry compliance rules. (Para 19 , 20) |
| 8. no retrospective benefit allowed. (Para 22 , 23) |
| 9. petition disposed based on current fees. (Para 24 , 25) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present petition has been preferred by the Petitioner challenging the Office Circular No. 2 of 2010, dated 12th January, 2010 (hereinafter, "Impugned Circular") issued by the Controller General of Patents, Designs and Trade Marks. The Petitioner herein regularly files patent applications for gene sequences before the Indian Patent Office. For the said purpose, the Petitioner was liable to pay official fee on the basis of the total number of pages in the application, including sequence listings, which run into thousands of pages. The Impugned Circular under challenge is set out below:
"In order to clarify the position regarding Filing of Sequence Listing in Print and Electronic Form, it is informed to all stakeholders that filing of sequence listing in Print Form is mandatory as it forms a part of patent specification. It is also required to file the sequence listings in Electronic Form for facilitating search as required under Rule 9(1) of the Patents Rules, 2003 (as amended). If number of pages of the patent specification including sequence listing in print form exceeds thirty, extra fee will be charged as per provisions made in the First Schedule of the Patent Rules."
3. As per the Impugned Circular, the amount of official fee payable has been prescribed under the First Schedule of the Patent Rules, 2003. At the time when the present writ petition was filed, the said Schedule stipulated as under:
4. In effect, the challenge is to the high amount of official fees payable by Applicants in patent applications relating to gene sequences where the sequence can run into thousands of pages as the fees is calculated on a per page basis.
5. The background of the present petition is that the Petitioner filed three PCT applications being PCT/US2005/017700, PCT/US2010/055669, and PCT/US2010/055751 for three separate gene sequences. Amongst the said three applications, Patent Application No.PCT/US2005/017700 was carried into the National Phase in India. However, it is the case of the Petitioner that the remaining two PCT applications being PCT/US2010/055669, and PCT/US2010/055751, could not enter the National Phase in India on account of the exorbitant/prohibitive official fee that was required to be deposited by the Petitioner with the Respondent-Indian Patent Office.
6. The details of the three PCT applications filed by the Petitioner, including the total number of pages in each of the applications, are set out below:
7. As per the Impugned Circular read along with the First Schedule of the Patent Rules, 2003 as it stood prior to amendments, the PCT applications of the Petitioner would have attracted official fee, to the following effect:
8. Pertinently, as stated in the petition, in the absence of the Impugned Circular, the Petitioner would have been liable to pay Rs.96,800/- qua PCT/US2010/055669 and Rs.88,800/- qua PCT/US2010/055751 as filing fee to the Indian Patent Office. However, in view of the circular, the official fees payable would have been in lakhs of rupees to obtain patents for the subject gene sequences.
9. It is submitted on behalf of the Petitioner that in the case of patent applications containing gene sequences, the ap
The court ruled that retrospective application of reduced patent fees is impermissible, emphasizing that the Government has the authority to set fee structures for applications.
Rule 22 of Patent Rules validly extinguishes patent rights for non-compliance with statutory deadlines, affirming the necessity of strict adherence to filing timelines.
Court may allow reinstatement of patent applications deemed abandoned due to patent agent's negligence if applicant shows no intent to abandon and diligent follow-up.
The introduction of a dichotomy in patent law between pre-grant and post-grant opposition necessitates adherence to legislative intent, despite procedural delays in enactment.
The main legal point established in the judgment is the necessity for determining the real questions in controversy between the parties and the consideration of prejudice or injustice to the other pa....
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