Humanity Life Extension Llc vs. Union Of INDIA And Anr.

Facts

The petitioner, Humanity Life Extension LLC, a US-based company, sought to file a National Phase Application in India for a patent. The application was based on a PCT Application filed on 05.09.2018, claiming priority from a US Application dated 06.02.2017. The stipulated deadline for filing the National Phase Application in India was 06.09.2019. The petitioner's Indian Patent Attorney failed to file the application by this deadline. The application was subsequently filed on 01.10.2019 and returned by the Indian Patent Office (IPO) on 03.10.2019. A second attempt was made on 09.10.2019, which was also returned on 14.10.2019. The petitioner contended that the amendment to Rule 138 of the Patents Rules, 2003, which removed the Controller's power to extend time for filing national phase applications, was ultra vires the Patents Act, 1970.

Held

The Court held that the petitioner's contention was not res integra and was squarely covered by the decision in Diebold Self Service Systems v. Union of India and Ors. The Court noted that in terms of Regulation 49.6(f) of the PCT Regulations, provisions not compatible with national law do not apply if the designated office informs the International Bureau accordingly. India had expressed reservations regarding Regulation 49.6(f) and communicated these to the International Bureau. The Court found that the coordinate bench in the Diebold case had also rejected the argument that reservations under Regulation 49.6(f) were impermissible. Therefore, the amended Rule 138 of the Patents Rules, which does not provide for condonation of delay in filing national phase applications, was upheld. The petitioner's request to entertain the National Phase Application and the application for extension of time was consequently rejected.

Key Issues

1. Whether the amendment to Rule 138 of the Patents Rules, 2003, effective from 16.05.2016, which removed the Controller's power to extend time for filing a national phase application, is ultra vires the rule-making power conferred upon the Central Government under Section 159 of the Patents Act, 1970, particularly in light of the Patent Cooperation Treaty (PCT) Regulations? The petitioner argued that Section 159 of the Patents Act empowers the Central Government to make rules to carry out the Act's purposes, and since India is a signatory to the PCT, rules cannot conflict with PCT provisions. Specifically, the petitioner contended that Rule 138, as amended, conflicts with Regulation 49.6 of the PCT Regulations, which allows for reinstatement of rights if the delay in meeting time limits was unintentional. The petitioner asserted that the amended Rule 138, by not providing for such condonation, goes beyond the delegated power. The respondents, through the Union of India, implicitly argued that the Patents Rules, as amended, are valid and that the time limits are mandatory. They relied on a coordinate bench's decision in Diebold Self Service Systems v. Union of India and Ors. to support their stance.