IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED;18.01.2011 CORAM; THE HONOURABLE MR.JUSTICE T.RAJA W.P.NOs.20683 and 20684 OF 2010 Dr.Vinitha Ponnukutty ..Petitioner in W.P.NOs.20683 and 20684/2010 vs The Controller of Patents & Designs Patents Office Branch Intellectual Property Right Building Industrial Estate SIDCO RMD Godown Area GST Road, Guindy Chennai 600 032 The Secretary to Government of India Ministry of Industry and Commerce Union of India New Delhi ..Respondents in W.P.Nos.20683 and 20684 of 2010 Writ Petition No.20683/2010 is filed under Article 226 of the Constitution of India praying for issuance of a writ of Mandamus directing the 1st respondent to process the petitioner's Patent Application No.863/CHE/2007 titled ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL PATIENTS by referring the same for examination and issue the First examination report. Writ Petition No.20684/2010 is filed under Article 226 of the Constitution of India praying for issuance of a writ of Mandamus directing the 1st respondent to process the petitioner's Patent Application No.864/CHE/2007 titled ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL PATIENTS by referring the same for examination and issue the First examination report. for petitioner in both the WPs :Mr.P.V.Balasubramaniam for respondents in both the WPs :Mr.C.V.Ramachandramurthy (for R1 and R2) O R D E R
The petitioner Dr.Vinitha Ponnukutty has filed Writ Petition No.20683 of 2010 under Article 226 of the Constitution of India seeking issuance of a Mandamus to direct the 1st respondent-The Controller of Patents & Designs Patents Office Branch Intellectual Property Right Building Industrial Estate to process the petitioner’s Patent Application No.863/CHE/2007 titled ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL PATIENTS by referring the same for examination and issue the First examination report.
2. The petitioner has also filed the Writ Petition No.20684 of 2010 under Article 226 of the Constitution of India seeking issuance of a Mandamus to direct the 1st respondent-The Controller of Patents & Designs Patents Office Branch Intellectual Property Right Building Industrial Estate to process the petitioner’s Patent Application No.864/CHE/2007 titled ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL PATIENTS by referring the same for examination and issue the First examination report.
3. (i) The learned counsel appearing for the petitioner has submitted that the petitioner Dr.Vinitha Ponnukutty is Doctorate Degree holder from the University of Madras. She is specialised in “Formulation, Standardisation and Evaluation of two low cost indigenous enteral tube feeding formulae for the critically ill patients.” By keeping in mind the economic scenario of the Indian population and knowing that commercial tube feeding diets are priced high, the petitioner made attempts to formulate and standardize low cost feeding formulae for the critically ill and patients and after her research for six years, she also succeeded in her research and came with a unique and cost effective indigenous enteral tube feeding formulae. After submitting the thesis to the University of Madras, she was awarded the Doctorate Degree for her research. She being the sole inventor of the above inventions, she also filed an application for obtaining patents for the above inventions on 23.04.2007 vide Patent Application No.863/CHE/2007 titled “Enteral Tube Feed Formula for critically ill patients and Patent Application No.864/Che/2007 titled “Enteral Tube Feed Formula for critically ill diabetic patients” by paying the requisite fee.
(ii) The only contention putforth for issuance of a writ of mandamus to the respondents is as per the Patent Act 1970, Patent Applications will be published in the official gazette on the expiry of 18 months from the date of filing or the date of priority whichever is earlier. Accordingly the petitioner’s applications were published on 18.7.2008 in the official patent gazette. A request for examination must be filed after the publication of the application but within 36 months from the date of priority or date of filing whichever is earlier. Accordingly, the petitioner has also filed requests for examination on 30.10.2008 for the abovesaid patents, of course after making the requisite fee. As per Section 12(2) of the Patents Act 1970 r/w Rule 24-B(2)(i) and (ii) of the Patents Rules 2003, when a request for Examination has been filed, the Controller shall refer the application and the specification and other document to the examiner within one month from the date of request for examination. Thereafter, the examiner to whom the application and the specification and other documents related thereto are referred under Section 12(1) shall ordinarily make the report to the Controller within one month but not exceeding 3 months. But in the present case, the applications submitted by the petitioner ought to have been referred to the examiner on or before 30.11.2008 and such examiner thereafter should have given his report to the Controller of Patents on or before 20.2.2009. Subsequently, the examination report along with the applications and the specification should have been reached the petitioner or her agent by 30.4.2009. In spite of the directions mentioned as above, the petitioner’s application has not been referred to the examiner for preparation of the report by the respondents. Therefore, the petitioner apprehending her inventions would be tampered with by somebody who has come to this Court seeking the abovesaid directions.
4. In reply, the learned counsel appearing for the respondents has submitted that the petitioner’s applications deserves to be considered within the time stipulated by the provisions of the abovementioned Act. There is no quarrel on that aspect. However, the only difficulty expressed before this Court by the learned counsel for the respondents is that due to want of staff in the office of the respondents, several applications filed by various inventors all over the country before the respondent office are pending and they are not disposed of all the applications within the time stipulated by the Act.
5. The argument of the learned counsel for the respondents that due to want of staff the respondents are not able to process the applications made by the inventor cannot hold water. It is to be noted that when the Act itself contemplates a particular period for registration and disposal of the applications and the same has to be complied with in letter and spirit. As it is not done so, the respondents cannot take the plea of want of staff in the respondents office to process the application for years together.
6. It is relevant to refer Section 12(2) of the Patents Act, 1970 and Rules 24B(2) and 24B(3) of the Patents rules, 2003, which are extracted as under:-
Section 12(2) of the Patents Act:
“The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section(1) shall ordinarily make the report to the Controller within such period as may be prescribed.”
Rule 24B(2)(i) and (ii) of the Patents Rules, 2003:
“(i)The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date of its publication or one month from the date of the request for examination whichever is later:
Provided that such reference shall be made in order in which the request is filed under sub-rule(1);
(ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller.”
Rule 24B(3) of the Patents Rules, 2003:
“A first examination report alongwith the application and specification shall be sent to the applicant or his authorized agent ordinarily within six months from the date of the request for examination or six months from date of publication whichever is later. In case other interested person files the request for examination, an intimation of such examination may be sent to such interested person.”
A mere reading of the above mentioned provisions clearly shows that every application filed for registration of the same has to be disposed of within a stipulated period. Whileso, the pendency of the application due to the shortage of number of hands to process the application do not merit any consideration at all. When the respondents have admitted in their counter that many applications of different inventors filed in the office of the respondent with different magnitudes are pending, as per rule 24B(3), a first examination report along with the application and specification shall be sent to the applicant or his authorized agent ordinarily within six months from the date of the request for examination or six months from the date of publication whichever is later. But, in the present case, the backlog of the petitioner’s application has not been taken up for examination from 2007 requires immediate attention by the respondent.
7. Going by the above procisions, this Court directs the first respondent to process the petitioner’s Patent Application No.863/CHE/2007 titled “ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL PATIENTS” and the Patent Application No.864/CHE/2007 titled ENTERAL TUBE FEED FORMULA FOR CRITICALLY ILL DIABETIC PATIENTS ” by referring the same for examination and issue the first examination report within a period of five months from the date of receipt of a copy of this order.
8. The second respondent- Ministry of Industry and Commerce shall look into the shortage of staff so that the inventions made by the scientists shall not be diluted by not registering them as per the mandate mentioned above. The second respondent is also directed to take suitable steps in recruiting the required number of staff taking into account the pendency of the applications from 2007 onwards so as to comply with the provisions of the Act.
9. Both W.P.Nos.20683 and 20684/2010 are allowed accordingly. No costs.
sal
To
1. The Controller of Patents & Designs
Patents Office Branch
Intellectual Property Right Building
Industrial Estate
SIDCO RMD Godown Area
GST Road, Guindy
Chennai 600 032
2. The Secretary to Government of India
Ministry of Industry and Commerce
Union of India
New Delhi