INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
1.8 Remedies Against Refusal to Grant an Intellectual Property Right An applicant has the option of filing a review application before the Controller, or may prefer to appeal against the decision, order or direction of the Controller before a High Court of relevant jurisdiction. An application to the Controller requesting review of their decision under Section 77(1)(f) of the Act is to be made within one month of the date of communication of such decision, on the basis of discovery of any new matter or evidence not previously known or any patent error on the face of the record. The applicant also has an alternative option of exercising their right to appeal under Section 117A of the Act before a High Court of relevant jurisdiction, against the orders of a Controller, in certain specified circumstances, including those pertaining to refusal of a patent application. 1.9 Consequences of Failure to Pay Annual Fees If there is any failure on the part of a patentee to file renewal fees (from the expiry of the second year), the patent ceases to have effect, and the subject matter covered by said patent is also excluded from any protection. To remedy the lapsing of a patent on account of non-renewal, the patentee can, with the leave of the Controller and within 18 months from the date on which the patent ceased to have effect, make an application under Section 60 of the Act for the restoration of such patent. Said applica- tion must contain a statement fully setting out the circumstances which led to the failure to pay the prescribed fee, and must provide further evi- dence therein, as necessary.
If the Controller is prima facie satisfied that the failure to pay the renewal fees was unintention- al and that there has been no undue delay in making the application, this is published for any opposition from any person interested. Based on the filing of such opposition and its disposal, the Controller may permit the patentee to file any unpaid renewal fees and such additional fees as may be prescribed, and to restore the lapsed patent. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights The Act permits amendment of a granted pat- ent to the limited extent of incorporating actual facts or a disclaimer, correction or explanation. No amendments are permitted to enable addi- tion of any new subject matter, either by way of claiming or describing a matter not in substance disclosed or shown in the specification before the amendment, or by any claim of the specifica- tion which does not fall wholly within the scope of a claim of the specification before the amend- ment. Thus, amendments to a granted patent are only permissible if they are clarificatory and are within the scope of the claims as granted. An application for amendment may be made by way of an application to the Controller under Section 57 of the Act, stating the nature of the proposed amendment as well as the reasons for seeking such amendment. Said application is also published for opposition, if any, before the Controller finally adjudicates on approval or rejection of such request. The application may be allowed by the Controller provided no suit or proceeding is commenced before or after fil- ing of the application to amend. Such a request may also be made during an ongoing revoca- tion proceeding before the High Court, wherein the patentee may be permitted to amend their complete specification.
227 CHAMBERS.COM
Powered by FlippingBook