Notice of allowance – an important missing link in Indian patent procedure
Archana Shanker and Devinder Singh Rawat of Anand and Anand identify an issue in the Indian patent process that is leading to uncertainty for patent applicants over the timing of decisions
Hon’ble Justice Manmohan Singh, the chairman of the Intellectual Property Appellate Board (IPAB), in Esco Corporation v. Controller of Patent, 2020, expressed the need for “notice of allowance or intimation of grant” in the Indian patent system and stated as follows:
“14.5 The time of filing the divisional application is also an important factor. Prior to the Patents (Amendment) Act, 2005, the divisional application could be filed till the date of putting the application in order for acceptance under the provisions of Section 16 read with Section 21 as it existed then. After the Patents (Amendment) Act, 2005 the provisions ‘before the grant of the patent’ was introduced in Section 16(1) for the phrase ‘before the acceptance of the complete specification’. Similarly, the heading of Section 21 was amended to read ‘Time for putting the application in order for grant’ in place of ‘Time for putting application in order for acceptance’, under the said Amendment Act 2005. Through this amendment, though the applicant has got the time for filing a divisional application till the grant of patent, but since the date of grant is uncertain and differs from case to case, the applicants are not certain for the date till which they can file the divisional application. An intimation to grant, if introduced, may bring certainty for the date of filing divisional applications.”
Indian Patents Act amendments
Several amendments have been introduced to the Indian Patents Act, 1970 since 1995. To streamline the patent process and achieve an efficient mechanism of dealing with patent applications, the legislature omitted, as well as introduced, some provisions in the Indian Patents Act through a series of amendments. Two such changes were:
The practice of issuance of notice of allowance was done away with; and
The provision relating to the sealing of patents was deleted.
Patent office practice was also modified to align with the changes.
If not both, the reintroduction of at least one aspect that was omitted several years ago seems to have become expedient, in some form or other. This will safeguard the rights of patent applicants and provide some sort of certainty for the applicant as to when to expect an outcome in their case, which will then be seen as a closure date, or the grant date, so that all events and activities that otherwise culminate on the grant date can be taken care of by the applicant.
This missing link between the hearing or filing of a response to the office action and actual grant is ‘sealing of patent or notice of allowance’. Why is this the missing link in the Indian context of relevance and how does one reconcile this concept of notice of allowance with the grant of a patent?
The Indian Patents Act, 1970 had a provision relating to the ‘sealing of patent’ that emanated from the Ayyangar report (a report on the revision of the Patents Law, by Shri Justice N. Rajagopala Ayyangar). By the Patents (Amendment) Act, 2005, the provision was omitted. Taking a step back, prior to the amendment, once the application for a patent was found to be in order, the Patent Office issued a notice of acceptance or intimation of grant of patent. The applicant was then required to pay a sealing fee and thereafter a patent would be granted and published in the journal. The typical language in the notice of intimation of grant then was:
“Your above said application for patent has been found in order for grant. However, the patent certificate thereupon will be issued only after processing of the application under Section 11(a) and completion of the statutory time limit and disposal of pre-grant opposition, if any, under Section 25(1) of the Act.”
Procedure in other jurisdictions
Similar provisions are available, for instance, in the US, the EPO, and Australia.
In the US, once the examiner is satisfied on merits in the examination process, they issue a notice of allowance and ask the applicant to verify the nature of claims, inventors, etc., and to comply with other formalities. After filing of the grant fees, the applicant may correct clerical errors in claims.
The wording of the notice of allowance is as follows:
“The application identified above has been examined and is allowed for issuance as a patent. Prosecution on the merits is closed. This notice of allowance is not a grant of patent rights. This application is subject to withdrawal from issue at the initiative of the office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
“The issue fee and publication fee (if required) must be paid within three months from the mailing date of this notice or this application shall be regarded as abandoned. The statutory period cannot be extended. See 35 U.S.C. 151. The issue fee due indicated above does not reflect a credit for any previously paid issue fee in this application. If an issue fee has previously been paid in this application (as shown above), the return of part b of this form will be considered a request to reapply the previously paid issue fee toward the issue fee now due.”
The EPO also issues a notice of grant prior to grant and allows the applicant to file claims in three languages, after which a patent is granted.
The relevant text is as follows:
“You are informed that the examining division intends to grant a European patent on the basis of the above application, with the text and drawings and the related bibliographic data as indicated below.”
In Australia, a similar provision is in practice for the issuance of a notice of acceptance for a patent application that requires the applicant to correct any typographical error or resolve any other issues with the application and thereafter the patent can be granted.
Indian patent process
In India, the importance of such a provision is well reflected in the order passed by the IPAB in Esco Corporation v. Controller of Patent, 2020. Many activities and processes under the Indian Patents Act are linked to the grant date, including:
The filing of divisional applications;
Providing details of corresponding foreign applications;
The filing of pre-grant oppositions; and
The filing of post-grant oppositions.
Under the current Indian process, once a response to the first examination report is filed, the applicant is unaware as to when a grant will be received or if there will be a hearing notice under Section 14 of the Indian Patents Act. If a hearing has taken place, the applicant is unaware of which claims will be allowed or disallowed, or if there is any other issue with the patent application.
After the hearing, the grant or refusal can happen within one week to a couple of months, but sometimes years, from the hearing date. This open-ended timeline makes the patent application and the applicant vulnerable. Let us consider the issues one by one.
The filing of details of corresponding foreign applications is mandatory under Section 8 of the Indian Patents Act and failure to comply with this requirement is a ground for invalidity. In the given circumstances, the applicant may endlessly provide information or sometimes, unintentionally due to the passage of time, may not provide information.
The patent office may not allow some claims for unity-related issues and grants the patent, as a result of which the applicant loses their opportunity to file one or more divisional applications. On the other hand, the applicant may file a precautionary divisional application that, pursuant to the grant, is abandoned or withdrawn.
This uncertainty leads to serial pre-grant oppositions that further delay the processing of the patent application.
There is no mechanism to verify the details of the applicant, claims, etc. prior to grant.
The provision of a notice of allowance, if reintroduced in a modified form, will facilitate the applicant completing all the formalities referred to above, which otherwise are closed once the grant happens. ‘Modified form’ means that the provision or procedure, once re-introduced, has to also take into account the pre-grant opposition provision wherein as on the date of notice of allowance, no further oppositions will be entertained. This is in line with the order of Hon’ble Justice Muralidharan in Snehlata Gupte vs Union of India in the Delhi High Court in 2007 that stated as follows:
“Reverting to Section 43 (1), the language used is that ‘a patent shall be granted as expeditiously as possible.’ Therefore the patent has to be granted once it is found that either the application has not been refused in terms of Section 25(1) read with Rule 55 (6) or it has not been found in contravention of any provision of the Act. In other words, at this stage the Controller is not expected to delay the pronouncement of the final decision. The thrust of Section 43 (1) and Rule 55 (6) is that of expeditious decision making by the Controller. Section 43 (1) indicates that the ‘patent shall be granted... with the seal of the patent office and the date on which the patent is granted shall be entered in the Register’. When read continuously, the language of Section 43 (1) does appear to indicate that it is the decision taken by the Controller on file which is the determining event for ascertaining ‘the date of grant of patent.’ The sealing of the patent and the entering of the patent in the Register obviously follows the act of the Controller passing an order to the effect that the patent has been granted. In other words, the sealing of the patent and the entering of the patent in the Register are, given the language of Section 43 (1) of the Act, intended to be ministerial acts evidencing the grant of patent, which is at a stage anterior to those ministerial acts.”
Changes in the procedure and practice will have several advantages, including certainty, and will facilitate the implementation of the act.