In the Indian Patent system, an application for the grant of a patent is taken up for examination by the Indian Patent Office only when a request for examination of the application is filed. Unless a request for examination is filed by either the Applicant or any other interested party there shall be no examination of a patent application. The time period for filing a request for examination shall be 48 months from the date of priority of the application or from the date of filing of the application, whichever comes earlier.

Types of Requests

A request for examination can be fast-tracked in India by way of either an express examination or an expedited examination. An express examination request can only be made for a PCT national phase application, and such a request must be filed within 31 months from the date of the earliest priority application with respect to the PCT national phase application. The examiner then has 3 months at the maximum to prepare an examination report. An expedited examination request must be filed in conjunction with a request for publication if not already filed, within 48 months of the priority date/date of application. An expedited examination allots applications into a separate digital queue that surpasses the normal examination requests. The examiner has two months within which he must provide the examination report. A request for expedited examination can only be filed by the applicant

Who can file a request for an examination?

As per Indian law, although there exists a definition of an interested party, there exist no guidelines on the interpretation of such provisions. The provisions of the Act simply state that either the applicant or any other interested party can file a request for examination of a patent application. The definition of ‘person interested’ under the Act includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. Thus, a person interested can also include competitors of the Applicant or any other related party.

In the case of Aditya Cement Staff Club v. Union of India with respect to a definition of ‘perquisite’ provided under  Finance Act ,1956 it was stated that “It may be noticed that Section 17(2) which defines the term ‘perquisite’ does not define it exhaustively but provides an inclusive definition, It is well settled that when there is an inclusive definition, ordinarily the ordinary meaning of word prevails over and above the words of inclusive definition for the purposes of that statute. The scope of an inclusive definition cannot be restricted to those categories only which occur in the definition, but an inclusive definition will extend to so many other things ordinarily falling within the parent expression, which are not talked of in the section”. Furthermore, in the case of Microfin Securities (P) Ltd. vs Additional Commissioner Of Income Tax it was stated that, “…an inclusive definition is only meant to serve a specific purpose and it cannot be stretched to mean and confer jurisdiction on a commissioner….”

Thus, we see that such a definition is inclusive and the Supreme Court over a period of time in the case of such inclusive definitions has referred to the case of Dilworth v. Commissioner of Stamps, wherein such words or sentences must be so construed such that they comprehend not only such things as they signify according to their natural import but also those things which the interpretation clause declares that they shall include. Such an inclusive definition would only be applicable when such entities would not be commonly or generally understood as falling within the definition. With respect to the definition provided in the Act though, the entities that are engaged in or promoting research would qualify as an interested person by default.

The judgment also provides for a parallel construction of such inclusive definitions to have a different interpretation as it can be equated to “mean and include” and may afford an exhaustive explanation of the meaning that must invariably be attached to these words. Such an exhaustive explanation can only be resorted to after looking into the use of such a word throughout the Act. Provisions in the Act that use the term ‘person interested’ are further found in the opposition proceedings, amendment proceedings, surrender & revocation proceedings, and compulsory licensing provisions. The one contentious issue on the interpretation of the term ‘interested person’ arises with respect to compulsory licensing wherein a wide interpretation of the terms would be detrimental to the basics of Patent law. The scope of interpretation of an ‘interested person’ cannot be a liberal interpretation, but rather the interpretation must be in relation to an entity that has the right to be considered as a licensee of the patent in question.

To encapsulate, under Dilworth an inclusive provision can be defined such that under one class all related terms possessing certain similar features but going under different names can be brought to. Thus, an outright liberal interpretation cannot be resorted to, rather a ‘person interested’ must mean that such an entity must be affected by the patent, a mere member of the public cannot fall under this description, whereas any entity that has been practicing in the related field to which the invention relates has the power to be considered as a ‘person interested’.

This article has been authored by Jacob Ninan.