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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 23^rdMay, 2022

+

W.P.(C)-IPD 84/2021

AGRIVIDA INC

..... Petitioner

Through:

Mr.

Rajiv

Kumar

Choudhry,

Advocate (M:9811028098)

versus

UNION OF INDIA AND THE CONTROLLER GENERAL OF

PATENTS

..... Respondent

Through:

Mr. Manish Mohan, CGSC with Mr.

Devendra

Kumar,

Ms.

Manisha

Saroha, Advocates (M:9999910115)

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1.

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 12^thJanuary, 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:

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002105

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002105

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:



PCT/US2005/017700

[Indian

Patent

Application

No.6939/DELNP/2006]

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002105



PCT/US2010/055669



PCT/US2010/055751

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002105

of the Petitioner would have attracted official fee, to the following effect:



PCT/US2010/055669



PCT/US2010/055751

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002105

subject gene sequences.

9.

It is submitted on behalf of the Petitioner that in the case of patent

applications containing gene sequences, the applications/sp