PUNEET KAUSHIK AND ANR vs. UNION OF INDIA AND ORS

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment reserved on : 05.09.2013
Judgment pronounced on : 23.09.2013

+ W.P.(C) 1631/2013

PUNEET KAUSHIK AND ANR ..... Petitioners
Through: Mr N.K. Kaul, Sr. Adv with Mr Praveen
Anand, Ms. Divya Vijan, Ms. Ayushi
Kiran & Ms. Neeti Wilson, Advs.

versus

UNION OF INDIA AND ORS ..... Respondents
Through: Mr. Amrit Pal Singh, CGSC with
Mr. Rajnish K. Jha, Adv. &
Dr. Kavita Taunk, Assistant Controller of
Patents.
CORAM:
HON'BLE MR. JUSTICE V.K. JAIN

V.K. JAIN, J.
The petitioners before this Court claim to have filed on 14.9.2012,
in the Patents Office (India) at New Delhi, an international (PCT)
application in terms of Rule 18.3 of the PCT Rules, enclosing therewith
(i) Form-25 (in duplicate) on behalf of petitioner no.1 Puneet Kaushik (ii)
Power of Attorney for Form-25 (copy) (iii) PCT Request along with
Declaration of Inventorship (in duplicate) (iv) PCT Power of Attorney (v)

W.P(C) No. 1631/2013 Page 1 of 24



complete specification along with drawings (in duplicate) (vi) PCT fee
calculation sheet and (vii) PCT Easy documents in CD with the
transmission fee of Rs.8,000/- and Form-25 fee of Rs.4,000/-. It was
stated in the covering letter that since the PCT application was first filed
for the invention, they were also enclosing Form-25 as per the practice of
Indian Patent Office.
2. An email dated 14.9.2012 was sent by Ms. Neeti Wilson of M/s
Anand and Anand, counsel for the petitioners, to the respondent, in
relation to the filing of PCT application and seeking clarification
regarding validity of the jurisdiction of RO/IN. One of the confirmations
sought in the email was that international filing date was independent of
the forwarding of the record to IB by RO. The said email was responded
on the same date by Eva Schumn of PCT Information Service Section,
PCT Legal Division, confirming that their understanding was correct and
drawing the attention to the PCT Rule 20.2. and 22.1(a) and (e). This was
followed by another email from Neeti Wilson to K.S. Kardam of the
Patent Office, with copy to Kavita Taunk and Archana Shanker of the
said office, stating therin that though the PCT application was duly
submitted to their office on 14.9.2012, that had not been taken on record,

W.P(C) No. 1631/2013 Page 2 of 24



on the ground that the application was not within the jurisdiction of
RO/IN and was not accompanied by permission for filing outside India
first. It was stated in the said email that RO/IN was the correct
jurisdiction for the PCT application since one of the applicants is an
Indian resident and RO/IN cannot refuse to accept the first filing PCT
application, irrespective of a permission letter being attached or not,
though a request for permission in F-25 was duly attached. A request was
made to take PCT application on record with international filing date as
14.9.2012. Earlier, another email was sent by Neeti Wilson to Mr. K.S.
Kardam of the respondents, on the same date, with copy to Kavita Taunk,
stating therein that they had sent a first filing PCT application on that
date, seeking allotment of international filing date as of that date. Vide
email dated 15.9.2012 M/s Anand and Anand to Mr. K.S. Kardam of
Patent Office was requested that the application be taken on record,
assigning international filing date of 14.9.2012. On receipt of the said
email, Mr. K.S. Kardam of the Patent Office requested Kavita Taunk of
the said office to look into the matter. Vide email dated 17.9.2012 from
Kavita Taunk of the Patent Office informed Archana Shanker of M/s
Anand and Anand that she had asked Neeti Wilson and Cyril to submit

W.P(C) No. 1631/2013 Page 3 of 24



the application on 14.9.2012 and had waited till 6.15 pm on that date, but
they had refused to file saying that they would only file Form-25 and,
therefore, on 17.9.2012 they could not get the filing date of 14.9.2012.
Responding to this, Neeti Wilson of M/s Anand and Anand wrote to Ms.
Kavita Taunk clarifying that they never refused to file PCT application
and in fact all the documents pertaining to the application were duly
submitted along with Form-25 on 14.9.2012 and the only confusion was
RO/IN was a valid receiving office which had since been clarified.
Replying to the said email, Kavita Taunk wrote of Neeti Wilson on the
same date stating therein that she had requested them to submit PCT
application and a separate Form-25 from the said application because
both had to be processed separately. She further stated that there was only
one set of document with Mr. Cyril and he had option to file either Form-
25 or PCT International Application, so Mr. Cyril informed her that he
had been directed to file Form-25 only.
Vide email dated 17.9.2012 Neeti Wilson of M/s Anand and Anand
again clarified that they had never refused to file PCT application and in
fact all the documents pertaining to PCT application were duly submitted
at the Patent Office along with Form-25 on 14.9.2012.

W.P(C) No. 1631/2013 Page 4 of 24



3. The grievance of the petitioners is that despite their having
submitted international PCT application, the respondents have not given
international filing date of the said application to them. The petitioners
are therefore before this Court seeking the following reliefs:
I. Issue a writ of mandamus or such other writ, order or
direction of a similar nature directing the respondent
authorities to grant the international filing date as 14.9.2012
to the petitioners international application and take the same
of record by assigning an international application number;
and
II. Issue a writ of mandamus or such other order or direction of
a similar nature directing the respondent authorities to
declare that a PCT application filed in India at the Indian
Receiving Office (RO/IN) would not require a prior
permission under section 39 of the Patents Act, 1970; and
III. Issue a writ of mandamus or such other writ, order or
direction of a similar nature directing the respondent
authorities to declare the Indian Receiving Office (RO/IN) as
the competent receiving office when an Indian resident /
national is an application of the PCT application filed at
RO/IN for at least one of any contracting states.

4. In their counter affidavit, the respondents have stated that the
petitioners did not file international application for patent under PCT and
filed an application for permission for filing outside India under Section
39 of the Patent Act on Form-25. It is further stated in the counter-
affidavit that a resident of India cannot file an application outside India
without obtaining the aforesaid permission. It is also claimed in the

W.P(C) No. 1631/2013 Page 5 of 24



counter affidavit that filing of request of Form-25 is different from filing
of international application under PCT since they are dealt with by two
separate counters in the office, the application under Section 39 at the
General Cash Counter and PCT Counter application in PCT Division. It is
also claimed in the counter affidavit that the documents filed in the PCT
Section do not go to EDP Section and come directly to RMID-4 Section
and the documents filed in EDM Section relating to Form-25.
5. Rules 19.1 & 19.2of PCT Regulations deal with offices competent
to receive international applications and read as under:
“19.1 Where to File
(a) Subject to the provisions of paragraph (b),
the international application shall be filed, at the
option of the applicant,
(i) with the national Office of or acting for the
Contracting State of which the applicant is a
resident,
(ii) with the national Office of or acting for the
Contracting State of which the applicant is a
national, or
(iii) irrespective of the Contracting State of
which the applicant is a resident or national, with
the International Bureau.
(b) Any Contracting State may agree with
another Contracting State or any
intergovernmental organization that the national

W.P(C) No. 1631/2013 Page 6 of 24



Office of the latter State or the intergovernmental
organization shall, for all or some purposes, act
instead of the national Office of the former State as
receiving Office for applicants who are residents
or nationals of that former State. Notwithstanding
such agreement, the national Office of the former
State shall be considered the competent receiving
Office for the purposes of Article 15(5) .
(c) In connection with any decision made
under Article 9(2), the Assembly shall appoint the
national Office or the intergovernmental
organization which will act as receiving Office for
applications of residents or nationals of States
specified by the Assembly. Such appointment shall
require the previous consent of the said national
Office or intergovernmental organization.
19.2 Two or More Applicants
If there are two or more applicants:
(i) The requirements of Rule 19.1 shall be
considered to be met if the national Office
with which the international application is
filed is the national Office of or acting for a
Contracting State of which at least one of
the applicants is a resident or national;
[
(ii) the international application may be filed
with the International Bureau under Rule
19.1(a)(iii) if at least one of the applicants is
a resident or national of a Contracting
State.”


W.P(C) No. 1631/2013 Page 7 of 24



Admittedly, the petitioner no.1 Mr. Puneet Kaushik is a resident of
India he being one of the applicants, the international application could
certainly be filed with the patent office, New Delhi in terms of Rule 19.1
read with Rule 19.2 (ii) of the PCT Regulations. To this extent, there is
no dispute between the parties.
6. The issues which arose for consideration in this writ petition are (i)
whether permission under Section 39 of the Patent Act is required before
an international application can be filed by an Indian national and (ii)
whether documents filed by the petitioner with the patent office at New
Delhi on 14.9.2012 can be said to be international (PCT Application)
within the meaning of the Regulations under the PCT and if the said
documents can be treated as an „International Application‟, what would
be the date of filing of the said application.
7. Section 39(1) of the Patents Act reads as under:

(a) an application for a patent for the same
invention has been made in India, not less than six
weeks before the application outside India; and

W.P(C) No. 1631/2013 Page 8 of 24



(b) either no directions have been given under sub-
section (1) of section 35 in relation to the
application in India, or all such directions have
been revoked.”

Admittedly, no application for the invention, subject matter of the
documents, submitted on 14.9.2012 was made in India, not less than six
weeks prior to 14.9.2012 in terms of clause (a) of sub section (1) of
Section 39. Therefore, since the petitioner no.1 is a resident of India,
permission in terms of section 39 of the Patents Act would be necessary
before he can make an application outside India for grant of a patent for
an invention. Therefore, the question would be whether the application
submitted on 14.9.2012 was an application outside India or not. The
contention of the learned counsel for the petitioner was that since the
application was being submitted to patent office in India, it cannot be said
to be an application made outside India. On the other hand, the contention
of the learned counsel for the respondent was that an international
application is an application outside India and the patent office in India
only collects such application on behalf of international organization and
forwards the same to it as a transmitting office.
8. Article 4(1)(ii) of the PCT provides that the request shall contain
inter alia the designation of the contracting State or States in which

W.P(C) No. 1631/2013 Page 9 of 24



protection for the invention is desired on the basis of an international
application. Article 11(3) of the PCT provides that the international
application fulfilling the requirements stated therein and accorded the
international filing date shall have the effect of regular national
application in each designated State as of the international filing date,
which date shall be considered to be the actual filing date in each
designated State. Therefore, the international application serves the
purpose of a regular national application in each of the States which is a
party to PCT and in which protection in respect of the invention is
desired. Therefore, an international application serves the purpose of
applying not only for the State in which it is received, but in all the
contracting States mentioned in the request. A perusal of the request
made by the petitioner would show that protection for the invention was
sought by the petitioners in all the designated States. It appears that Dell
Products L.P. was applicant in all the designated States except U.S.,
whereas Puneet Kaushik was the applicant only in U.S.A. Article 12 of
PCT provides that one copy of the international application shall be kept
by the receiving office, one copy shall be transmitted to the International
Bureau which means the International Bureau of the Word Intellectual

W.P(C) No. 1631/2013 Page 10 of 24



Property Association and another copy shall be transmitted to the
competent International Searching Authority, which is required to carry
out international search and which in terms of Article 16 of PCT can
either be a national office or Inter-Governmental Association such as the
International Patent Institute, whose tasks include the establishing of
documentary search report on prior art, with respect to inventions which
are the subject of applications. The procedure before the International
Searching Authority is to be governed by the provisions of the Treaty,
regulations and agreements which the International Bureau is to conclude
with the International Searching Authority. If the International Searching
Authority considers that the description, the claims or the drawings fail to
comply with the prescribed requirements to such an extent that a
meaningful search cannot be carried out, it is required to declare so and
notify the applicant as well as the international Bureau that no
international search report would be established. The international search
report, as provided in Article 18(2) of PCT, is to be transmitted to the
applicant as well as the International Bureau. Article 19 of PCT permits
the applicant to amend his claims before the International Bureau after
receipt of the International Search Report. As provided in Article 22, the

W.P(C) No. 1631/2013 Page 11 of 24



international application along with international search report is to be
communicated to each Designated Office. Thus, the International
Searching Authority functions independently of the Receiving Office.
As noted earlier, one copy of the international application is
required to be transmitted by the receiving office to the International
Bureau. Article 21 of PCT enjoins upon the International Bureau to
publish international applications. Article 55 of the PCT provides that the
administrative task concerning the union shall be performed by the
International Bureau, which is required to function in accordance with the
directions of the Assembly constituted under Article 53 and is to consist
of delegates of each contracting State.
In terms of Rule 24.2 of PCT Regulations, on receipt of copy of the
international application, the International Bureau is required to notify the
applicant the Receiving Office and the International Searching Authority
of such receipt along with the date of receipt of the record copy. Such
notification is to identify the international application by its number filing
date and name of the applicant.
. Considering the scheme of PCT, as discussed hereinbefore, it
would be difficult to accept the contention that the international

W.P(C) No. 1631/2013 Page 12 of 24



application received by Indian Patent Office is an application made in
India. Under the scheme, such an office primarily acts as an office which
receives such application, gives filing date to it and then transmits its
copies to the concerned authorities such as International Bureau and
International Searching Authority for further processing. The entire
processing thereafter is to be carried out outside India, either by the
International Bureau or by the International Searching Authority.
Therefore, in my view, the provisions of Section 39 are necessarily
attracted to such an application, thereby necessitating a written permit to
be granted by the Controller, in terms of Section 39 of the Patents Act.
No such application, in my view, can be processed by the Indian Patent
Office, unless it is accompanied by such a permit. In fact, this also
appears to be the understanding of the petitioners who actually applied
for such permit by submitting Form 25, whereby a request was made to
the Controller of the Patent for permission for making patent application
outside India.
The learned counsel for the petitioner submitted that they had to
submit Form-25 since as per the practice adopted by it, the Patent Office
does not accept any international application unless it is accompanied by

W.P(C) No. 1631/2013 Page 13 of 24



such a form. The practice adopted by Indian Patent Office, in my view, is
correct and an international application must necessarily be accompanied
by a request under Section 39 of Patents Act unless such a permission has
already been obtained or an application for a patent for the same
invention had been made in India not less than six weeks before the
international application is made.
10. Relying upon Section 138 (4) and Section 35 of the Patents Act,
1970, the learned counsel for the petitioner contended that an
international application submitted to the Indian Patent Office cannot be
treated as an application made outside India. I, however, do not agree
with the learned counsel. What sub-section (4) of Section 138 read with
Section 7 (1A) and (1B) really means is that once the application in terms
of the provisions of PTC is made and India is one of the designated States
mentioned in the application, there would be no need to make a separate
application in India and the international application would serve the
requisite purpose. The aforesaid provision in the Patents Act, 1970 was
necessitated on account of the provisions contained in PCT which
stipulate that an international application would be termed as an
application made in all the States designated in such an application,

W.P(C) No. 1631/2013 Page 14 of 24



thereby obviating the necessity of filing separate applications in each
designated State in terms of the requirement of domestic laws of such
States. This provision has no bearing on the issue as to whether an
international application can be said to be an application made in India or
is to be treated as an application made outside India.
It was also contended by the learned counsel for the petitioner that
a PCT application filed in India would be subject to scrutiny and
clearance under Section 35 and not under Section 39 of the Act. Again, I
find no merit in the contention. Section 35 and Section 39 operate in
altogether different fields. Section 35 deals with the cases where the
controller is of the view that the invention in respect of which patent is
sought is one of a class notified to him by the Central Government as the
class relevant for defence purposes or where the invention otherwise
appears to the controller to be relevant for the defence purposes. Section
35 also gives power to the Central Government to invite the controller
where it finds that the invention subject matter of the patent application is
relevant for defence purposes and on receipt of such notification, the
provisions of sub-section (1) of section 35 are to apply to such an
invention. Section 39, on the other hand, applies only to the applications

W.P(C) No. 1631/2013 Page 15 of 24



made outside India by an Indian resident, irrespective of the nature of the
patent and requires a written permit unless the invention is covered by
clause (a) of sub-section (1) of the said Section.
It was also contended by the learned counsel for the petitioner that
Section 39 has to be read in the light of Section 35, 36 and 38 and if so
read, Section 39 would apply to only those inventions which are relevant
for defence purposes or atomic energy and national security
considerations arise to the invention on account of its nature. The
contention was that the legislative intent was to ensure that no technology
conceived and developed in India should leave its shore without scrutiny
from the point of view of defence and atomic energy related purposes.
However, the provisions of Section 39 contain no such qualification with
respect to the applications made outside India and in view of the
unambiguous expressions used in Section 39 the scope of the Section
cannot be restricted only to the inventions of a particular nature.
11. Admittedly, the written permit in terms of Section 39 of the Patents
Act, 1970 came to be granted to the petitioner only on 27.09.2012, though
the international application was delivered in the Patent Office on
14.09.2012. Since written permit in terms of Section 39 was a mandatory

W.P(C) No. 1631/2013 Page 16 of 24



requirement for such an application, the international application, even if
complete in all other respects cannot be given a filing date earlier than the
date on which the written permit in terms of Section 39 is issued.
Therefore, the respondents could not have acceded to the request of the
petitioners to give 14.09.2012 as the international filing date.
12. The next question which comes up for consideration is as to
whether the petitioners had submitted only an application under Section
39 of Patents Act by filling up Form 25 or they had also simultaneously
submitted an application to the Indian Patent Office on 14.09.2012.
Article 11 (1) and (2) of the PCT, to the extent it is relevant, reads as
under:-
(1) (i) the applicant does not obviously lack, for
reasons of residence or nationality, the right to
file an international application with the
receiving Office,

(ii) the international application is in the
prescribed language,

(i) the international application contains at least
the following elements:

(a) an indication that it is intended as an
international application,

(b) the designation of at least one Contracting
State,

W.P(C) No. 1631/2013 Page 17 of 24




(c) the name of the applicant, as prescribed,

(d) a part which on the face of it appears to be a
description,

(e) a part which on the face of it appears to be a
claim or claims.

(2)(a) If the receiving Office finds that the
international application did not, at the time of
receipt, fulfill the requirements listed in paragraph
(1), it shall, as provided in the Regulations, invite
the applicant to file the required correction.

(b) If the applicant complies with the invitation, as
provided in the Regulations, the receiving Office
shall accord as the international filing date the date
of receipt of the required correction.”

A perusal of the documents submitted by the petitioners to the
Patent Office on 14.09.2012 would show that they had submitted
documents for an International PCT application and enclosed PCT
request, PCT power of attorney, specification along with drawings, PCT
free calculation sheet and PCT easy documents in CD. The aforesaid
request duly complied with all the requirements of clause (iii) of Article
11(1) of PCT. The application admittedly was in prescribed language and
the applicants had the right to file an international application in India
since one of them Puneet Kaushik is a citizen and resident of India.

W.P(C) No. 1631/2013 Page 18 of 24



13. The following, according to the respondents, were the deficiencies
in the documents of the petitioners due to which the request made by
them cannot be treated as PCT international application:-
i) the agent for the petitioners did not have power of authority
required under Article 135 of the Patent Regulations;
ii) the petitioners did not possess written permission in terms of
Section 39 of Patent Act;
iii) required number (3) of copies of the specifications were not
submitted;
iv) the required fee was not paid

14. As regards written permit required in terms of Section 39 of the
Patents Act, though such an permission is mandatory before an
international filing date by Indian Patent Office since the requisite written
permit admittedly was granted to the petitioners on 27.09.2013, the PCT
application, if it otherwise confirms to the mandatory requirements of the
Articles and Regulations of the PCT can be given 27.09.2013 as the
international date.
As regards number of the copies of specifications, to my mind, it
would not be a mandatory requirement to file the copies in requisite

W.P(C) No. 1631/2013 Page 19 of 24



number, while submitting the PCT request, since the Receiving Office is
required to invite the applicants to comply with the requirements of PTC
by submitting copies of the specifications in requisite number and it is
only on failure of the petitioners to provide copies in requisite number
that the PCT application can be treated as withdrawn, on account of
failure of furnish the requisite number of such copies. A reference in this
regard may be made to Article 14 of the PTC which mandates the
Receiving Office to invite the applicants to correct certain defects in the
international application, within the prescribed time limit, failing which
the application is to be treated as withdrawn. Rule 19 of the Patent Rules,
on which the reliance is placed by the respondents, does provide for filing
international application in triplicate, but sub-rule (3) of the said rule also
provide that where the specified number of international applications are
not filed, the applicant can request the appropriate office to prepare the
additional copies on his paying such fee in this regard as may be required
by the said office for making such copies. This clearly indicates that
requirement to submit an application in triplicate is not mandatory and
additional copies can be obtained at a later date.

W.P(C) No. 1631/2013 Page 20 of 24



As regards the contention that the petitioners did not pay the
requisite fee, reference in may be made to Rule 16 bis. of Regulations
under the PCT. Clause (a) of the said Rule provides that where the fee
are not paid to the Receiving Office by the time stipulated in Rule 14.1
(c), 15.4 and 16.1 (f) or the fee, so paid, is insufficient, the Receiving
Office shall invite the applicants to pay the required amount to cover
those fee, together with the late payment fee under Rule 16 bis.2, within
one month from the date of the invitation. It is only where the applicant,
despite such an invitation, does not pay the requisite amount of fee/late
payment fee within the time limit referred above, that the application can
be declared to be withdrawn in terms of Article 14(3) of the PCT.
15. The last defect pointed out by the respondents in the PCT
application filed by the petitioners is that the said application was not
accompanied by a valid Power of Attorney. Article 14 of PCT, to the
extent it is relevant, provides that the Receiving Office shall check
whether the international application is signed, as provided in the
Regulations or not. Rule 26.2 bis of PCT Regulations provides that for
the purpose of providing 14(1)(a)(i) and (ii) if there is more than one
applicants, it shall be sufficient that the request be signed by one of them.

W.P(C) No. 1631/2013 Page 21 of 24



Therefore, the PCT application submitted by the petitioners could be
signed by either of them or by duly constituted attorney of either of them.
Assuming that the PCT application submitted by the petitioners was not
signed, as required in terms of Article 14, the Receiving Office is
required, under Rule 26 of PCT Regulations, to invite the applicants to
rectify the defect by furnishing the required corporation within two
months from the date such an invitation is issued. The time to make
corrections can also be extended by the Receiving Office at any time
before taking a decision on the application (Rule 26.2 of PCT
Regulations). In fact, Article 14(1)(b) of PCT also mandates the
Receiving Office to invite the applicant to correct the international
application within the prescribed time limit and it is only on the failure of
the applicant to do so that the application can be considered and declared
to be withdrawn. In any case, the petitioners have now placed on record a
PCT power of attorney dated 14.09.2012 duly signed by petitioner No. 1
Shri Puneet Kaushik in favour of Neeti Wilson, Archana Shankar and
Vishisha Garg of M/s. Anand and Anand as his agents for the purpose of
filing a PCT application with Patent Office in India. They have also
placed on record a General Power of Attorney dated 01.12.2006,

W.P(C) No. 1631/2013 Page 22 of 24



executed by petitioner No. 1 Dell Products L.P., authorizing inter alia
Praveen Anand, Archana Shankar, Jaya Bhatnagar, etc. The said power
of attorney authorized the persons named therein to act jointly or
individually in connection with granted patents and pending applications
or any future cases, their renewals and maintenance objections,
oppositions, etc. and the executants has ratified and agreed to ratify and
confirm all acts done by the attorneys mentioned therein in respect of the
matters and proceedings stated in the said documents.
In terms of the power of attorney dated 14.09.2012, the PCT
application on behalf of petitioner No. 1 Puneet Kaushik could be signed
by any of the persons appointed as attorney in the said document. In
terms of the power of attorney dated 01.12.2006, the application could be
signed by any of the attorneys, mentioned in the document on behalf of
petitioner No.2 Dell Products L.P. A perusal of the documents submitted
by the petitioners on 14.09.2012 would show that PCT application was
signed by Neeti Wilson. She was competent to sign the said application
on behalf of both the petitioners though her authority to sign it on behalf
of either of them would be sufficient compliance with the requirements of
PTC Regulations.

W.P(C) No. 1631/2013 Page 23 of 24



16. For the reasons stated hereinabove, the writ petition is disposed of
with a direction to the respondents to grant within six (6) weeks from
today, 27.09.2012 as the international filing date in respect of the PCT
application submitted by the petitioners to the Indian Patent Office on
14.09.2012 and assign an international number to the said application
subject to their submitting the copies of specifications in required
number, and paying the requisite fee/late fee, within such time as the
respondents stipulate in this regard in the light of the provisions of PCT
in this regard.
In the facts and circumstances of the case, there shall be no order as
to costs.

V.K.JAIN, J
SEPTEMBER 23, 2013
Rd/BG


W.P(C) No. 1631/2013 Page 24 of 24