In this post I will discuss Selfdot Tech. v. Controller General of Patents passed by the Madras High Court. I will engage with the arguments raised by the appellant and the respondent with regard to patent of addition, the parent patent application and the scope of Sec. 39. Further, I will analyze the reasoning used by the court in creating a different standard of treatment for divisional applications and patent of additions. I argue that the court narrows the scope of sec. 39 in light of its purposes by creating a distinction between substantial and procedural contravention thereof and thus creates a safeguard for bona fide mistakes.  

Judgement

In Selfdot Tech., MHC had to decide whether failure to obtain prior permission u/s. 39 for “Patent of addition” from the Patent office can cause it to be deemed as abandoned u/s 40. The Statutory provisions in this regard are fairly straightforward. Sec. 39 requires a person filing for an international patent to either (i) file such an application in India and wait for six weeks before the Patent Office and Central Government could determine whether the application was relevant for defense purposes; or (ii) obtain permission to make the Foreign Filing after filing Form 25 before the Patent office. 

In the present case, the Parent (patent) application had been duly filed before the Indian Patent Office and was filed outside India only after the expiry of six weeks. The court also noted in Para 5 that the parent application was ‘not relevant for defence purposes or related to atomic energy.’  What was the issue then?

After Parent application was granted on 11.09.2018 by the US Patent Office, the appellants further filed for ‘Continuation-in-part’(equivalent to patent of addition) before the US Patent Office without obtaining prior permission u/s. 39.

Later when the appellant filed an application for patent of addition before the Indian Patent Office, the same was deemed abandoned u/s 40 for violating sec. 39. Doing so the respondent considered whether the term “any application” under Section 39 would include applications for patent of addition and divisional applications as well or not. On this, the respondent reasoned that ‘divisional application’ do not require prior permission to the extent that the subject matter of the divisional application is already disclosed in the parent application. On the other hand, the patent of addition discloses information over and above the parent application which has not been previously disclosed before the Patent office. Therefore, while permission for parent application would cover divisional applications, prior permission is separately needed under Sec. 39 for patent of additions before obtaining an international patent.

MHC, partially agreeing with the above, notes in Para 12, “a patent of addition, i.e. involving an improvement in or modification of the parent or main invention, would invariably require additional disclosures to those contained in the complete specification of the main invention.” MHC reasoned that combinedly reading sec. 54(1) & (2)(which enables only the patentee of the parent application to file for a patent of modification in relation thereof) and proviso to sec. 55(1)(a patent of addition can survive as an independent patent if the parent application is revoked) means that “patent of addition stands on a different footing from a divisional application.” The above reasoning is in line with reasons and purposes wherefore sec. 39 was inserted in the Patent Act i.e. to enable the Controller to apply directions which shall prevent the flow of sensitive information relating to the country’s security, outside India (here).

 However, the court recognised that there was ambiguity in sec. 39 whether its scope included such an application. In fact, it conceded that the statutory framework supports the conclusion that the patent of addition is strongly linked to the patent application in multiple ways which led appellants to the bona fide belief that permission under sec. 39 was not mandatory for the former if the latter was granted the same.

Substantial and Procedural Infractions

The contravention of sec. 39 entails ‘abandonment of patent’ u/s. 40 i.e. outright rejection of the Patent. The court also notes that the consequences of ‘deemed abandonment’ are drastic. Could the court, after acknowledging the ambiguity underlying sec. 39 and bona fide belief of the appellants, impose such a serious penalty?

The court in this case was aware of the problem. It was hesitant to prescribe such harsh punishment to the appellants over a bona fide mistake that prior permission for their application was required when the parent application was granted the same.

Therefore, the court noted that the infraction under sec. 39 can be classified as (i) procedural infraction; and (ii) substantive infraction. The former would include procedural irregularity, technical breaches, minor errors, and lapses which should not lead to outright rejection of the patent application. Therefore, mere technical breach of sec. 39 will not lead to deemed abandonment. On the other hand, the latter is “a clear breach of the written permit requirement in respect of inventions in all fields, including, in the specific context of inventions relevant for defence purposes or atomic energy, the requirement of prior consent of the Central Government.” For a breach to qualify as a substantial infraction, it must be clear ‘from the facts and circumstances that the applicant concerned did not intend to abandon the application.’ In other words, the actions of the patent application must be intended to ‘circumvent’ the requirements of sec. 39, and consequently to abandon the application.

In this case, the court rightly held that the appellant will not qualify for substantial breach since they were operating under a bona fide belief which was apparent from the statuary scheme.

Conclusion

MHC in this case clarifies the ambiguity and scope of sec. 39 of the Patents Act. It correctly assesses the statuary scheme which does not carve out any exception for patent of addition or divisional application. Therefore, the scope of sec. 39 is very wide to include both divisional applications and the application for patent of addition. However, reading the same in light of its purposes and penalties imposed in breach thereof, the order narrows its scope. MHC in the present case provides a minimal safeguard by laying down that contravention of sec. 39 must only be a substantial infraction for the court to impose drastic consequences u/s. 40.

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• Source: https://spicyip.com/2023/12/mhc-interprets-section-39s-interplay-with-patent-of-addition-applications.html