This past month, the Hon’ble Madras High Court has interpreted the application of Section 39 of the Patents Act, 1970 (“Act”), in the case of “Selfdot Technologies (OPC) Pvt. Ltd. (“Appellant”) v. Controller General of Patents, Designs & Trademarks (“Controller”). The Court, taking into account the amendment to the Act in 2005, noted that Section 39 of the Act which requires Indian residents to secure permission before submitting patent applications overseas, is a mandatory provision. In particular, the Court noted that the amendment broadened the applicability of Section 39 to encompass all domains, not solely those associated with defence or atomic energy.
The Appellant filed a patent application (201843023004) in India, subsequently filed and granted in the United States. Following this, a U.S. Continuation-in-Part (analogous to a patent of addition in India) was filed both in the U.S. and India. The Controller refused the patent of addition, on the ground of absence of a request for foreign filing permission as mandated by Section 39 of the Act. The Appellant, in its appeal, contended that as the parent patent was initially filed in India, Section 39 of the Act should not apply to the patent of addition. The Controller, on the other hand, distinguished between divisional applications and patents of addition, highlighting that the latter introduces supplementary subject matter not covered by the parent application, necessitating separate permission under Section 39 of the Act.
The Court, in its ruling, identified uncertainties within Section 39 of the Act concerning its relevance to patents of addition. The Court also acknowledged the intrinsic connection between the patent of addition and the primary invention, along with the Appellant’s genuine belief that permission was unnecessary due to the prior filing in India. The Court classified the Appellant’s breach as technical (involves a failure to adhere to procedural, administrative, or formal requirements outlined in laws, contracts, or regulations) rather than substantive (non-compliance that goes to the core of the law, contract, or agreement). The Court further stressed that legal constructs such as that in Section 40 of the Act should not exceed their intended scope. The technical breach did not merit the serious consequence of the patent of addition to be deemed to be abandoned as per Section 40 of the Act.
The Court, accordingly, set aside the refusal order and referred it for reconsideration. The Court, however, ruled that the Controller was at liberty to impose conditions on the Appellant for procedural infractions under Rule 137 of the Patents Rules 2003 or any other pertinent provision, it deems fit.