S. Usha, J
1 . The above matter was posted for deciding the issue of maintainability. The Registry of the Board had raised the issue as to the maintainability of
the appeal against an order passed under section 7 of the Patents Act, 1970. Learned counsel Shri Hemant Singh appeared on behalf of the appellant
and submitted that the appellant filed the PCT application before the U.S. Patent & Trade Marks office on 29.10.2007. The said application claimed
priority from U.S. Application No. 60/856656 dated 03/11/2006 and U.S. Application No. 60/936866 dated 22/06/2007. The appellants made an
attempt to file the patent application in October 2009, after becoming aware of the failure to meet the 31 months national phase deadline. The papers
were presented in person in the office of the Patent Registry which was not taken. Therefore, the appellants had sent it by courier. The Patent Office
had rejected the same stating that the same was filed out of time and could not be taken on record.
2. The appellants, being aggrieved filed a Writ Petition before the Hon'ble High Court of Delhi. The Hon'ble High Court held that an applicant for
patent can file a national phase application after 31 months provided an application to explain the delay under Rule 137 was filed. The applicants may
file the same along with an application for condoning the delay and therefore the Controller to take on record the application and to hear and pass an
order was the decision of the Hon'ble High Court of Delhi.
3. After hearing the appellants, the 2nd respondent passed the impugned order under section 7 of the Patents Act, 1970 read with Rule 137 refusing to
take their application on record.
4. The counsel further submitted that the order has been passed for non compliance of the provisions. As per section 15 of the Act, the Controller has
powers either to refuse or accept the application after amendment. The Controller has the power to allow the amendment of the application in general
where no specific provision is given. In this case on hand, the Controller has rejected the application for non-compliance of the requirement and has
exercised his discretion under Rule 137. As per section 15, the Controller may either refuse or accept the application after amendment. Therefore, the
order is passed under section 15 and cannot be said to be an order under section 7 of the Act. The appeal is hence maintainable.
5. We have heard and considered the arguments of the appellants counsel.
6. We shall quote the provisions of section 7 & 15 of the Patents Act, 1970 and Rule 137 of the Patent Rules, 2003 for the sake of convenience and
easy reference:-
7 . Form of application.- (1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the
patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an
application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in subsection (1A) and its complete specification processed by the patent office as designated office
or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the
application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the 3[person] claiming to be the
true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the
applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be
accompanied by a provisional or a complete specification.
15. Power of Controller to refuse or require amended applications, etc., in certain case:- Where the Controller is satisfied that the application or any
specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the
Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his
satisfaction before he proceeds with the application and refuse the application on failure to do so.
137. Powers of Controller generally:- Any document for the amendment of which no special provision is made in the Act may be amended and any
irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if
the Controller thinks fit and upon such terms as he may direct.
7. Section 7 deals with the application form. It states as to the particulars required to be given in the application and the necessary documents to be
accompanied along with the application.
8 . Section 15 deals with the powers of the Controller to refuse or require amended application. If the Controller is not satisfied with the application
specification or if the documents are not accompanied along with the application as per the provisions of the Act, the Controller may direct the
applicant to comply with the same. If the applicant does not comply with, the Controller may proceed to refuse the application.
9 . Rule 137 deals with the powers of the Controller in general where there is no specific provision under the Act for amendment or to rectify any
irregularity in the procedure, the document may be allowed on rectification considering the interest of the person.
10. Section 7 deals with the requirements of the application. Section 15 deals with the compliance of the requirements and the Controller may direct
the applicant to comply with and if not, the Controller may proceed to refuse the application. In the instant case, the applicant had not complied with
and the Controller had passed an order. The impugned order has been passed under section 15 and cannot be said to have been passed under section
7. Section 7 deals only with the requisites in the application and if not complied with, the Controller has powers under section 15 to direct. The
applicant has not complied with and therefore refused, according to the Controller. In our considered view, the impugned order has been passed under
section 15 and therefore the appeal is maintainable. We direct the Registry to number the appeal if, in order.
