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Chapter 16 – Miscellaneous

BananaIP Counsels > The Patent Rules > Chapter 16 – Miscellaneous

Chapter 16 – Miscellaneous

 

121. Period within which copies of specification etc. are to be filed. 

 

The period within which copies of specification or corresponding documents to be filed by the applicant under subsection (1) of section 138 shall be three months from the date of communication by the Controller.

 

 

121A. Address of Communications.

 

All communications in relation to any proceeding under the Act or these rules shall be addressed to the Controller at the appropriate office.

 

 

122. Correction of clerical errors.

 

A request for the correction of a clerical error in any document referred to in section 78 shall be accompanied by a copy of the document highlighting the corrections clearly along with the fees payable therefor as specified in the First Schedule.

 

 

123. Manner of advertisement of the proposed correction of any error. 

 

Where the Controller requires a notice of the nature of the proposed correction to be advertised, the request and the nature of the proposed correction shall be published and the person making the request shall also serve copies of the request and the copies of the document showing the proposed corrections to such persons who, in the opinion of the Controller, may be interested.

 

124. Manner and time of opposition to the making of corrections.

 

(1) Any person interested may, at any time, within three months from the date of the advertisement of the request for correction give notice of opposition to the Controller in Form 14 in duplicate.

 

(2) Such notice of opposition shall be accompanied by a statement in duplicate setting out the nature of the opponent’s interest, the facts on which he relies and the relief which he seeks.

 

(3) A copy of the notice and of the statement shall be sent by the Controller to the person making the request.

 

(4) The procedure specified in rules 58 to 63 relating to the filing of reply statement, leaving evidence, hearing and costs shall, so far as may be, apply to the hearing of the opposition under section 78 as they apply in the hearing of the opposition proceeding.

 

 

125. Notification of corrections.

 

The Controller shall notify the person making a request for the correction and the opponent, if any, of the corrections made in the relevant document.

 

 

126. Form, etc., of affidavits.

 

(1) The affidavits required by the Act or these rules to be filed at the patent office or furnished to the Controller shall be duly sworn to in the manner as prescribed in sub-rule (3).

 

(2) Affidavits shall be confined to such facts as the deponent is able, of his own knowledge, to prove except in interlocutory matters, where statements of belief of the deponent may be admitted, provided that the grounds thereof are given.

 

(3) Affidavits shall be sworn to as follows:—

 

(a) in India—before any court or person having by law authority to receive evidence, or before any officer empowered by such court as aforesaid to administer oaths or to take affidavits;

 

(b) in any country or place outside India—before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 (41 of 1948) in such country or place or before a notary of the country or place, recognised by the Central Government under section 14 of the Notaries Act, 1952 (53 of 1952), or before a judge or magistrate of the country or place.

 

(4) Alterations and interlineations shall, before an affidavit is sworn to or affirmed be authenticated by the initials of the person before whom the affidavit is sworn to.

 

 

127. Exhibits.

 

Where there are exhibits to be filed in an opposition or any other proceedings, a copy or impression of each exhibit shall be supplied to the other party at his request and expense; if copies or impressions of the exhibits cannot conveniently be furnished, the originals shall be left with the Controller for inspection by the person interested by prior appointment. The exhibits in original if not already left with the Controller shall be produced at the hearing.

 

 

 

128. Directions not otherwise prescribed.

 

(1) Where for the proper prosecution or completion of any proceedings under the Act or these rules, the Controller is of the opinion that it is necessary for a party to such proceedings to perform an act, file a document or produce evidence, for which provision has not been made in the Act or these rules, he may, by notice in writing, require such party to perform the act, file the document or produce the evidence specified in such notice.

 

(2) Where an applicant or a party to a proceeding desires to be heard or not heard, the Controller may, at any time, require him to submit his statement in writing giving such information as the Controller may deem necessary within the time specified by him.

 

129. Exercise of discretionary power by the Controller.

 

Before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to a proceeding adversely, the Controller shall give such applicant or party, a hearing, after giving him or them, ten days notice of such hearing ordinarily.

 

129A. Adjournment of hearing.

 

An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee prescribed in First Schedule, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly:

Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.

 

130. Application for review of decisions or setting aside of orders of the Controller.

 

(1) An application to the Controller for the review of his decision under clause (f) of sub-section

 

(1) of section 77 shall be made in Form 24 within one month from the date of communication of such decision to the applicant or within such further period not exceeding one month thereafter as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, the Controller shall forthwith transmit a copy of each of the application and the statement to the other person concerned.

 

(2) An application to the Controller for setting aside an order passed by him ex parte under clause (g) of sub-section (1) of section 77 shall be made in Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the application is based. Where the order concerns any other person in addition to the applicant, the Controller shall, forthwith transmit a copy each of the application and the statement to the other person concerned.

 

 

131. Form and manner in which statements required under section 146(2) to be furnished.

 

(1) The statements which shall be furnished by every patentee and every licensee under sub- section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licensee or his authorised agent.

 

(2)The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

 

(3) The Controller may publish the information received by him under subsection (1) or subsection (2) of section 146.

 

 

 

132. Form of application for the issue of a duplicate patent.

 

An application for the issue of a duplicate patent under section 154 shall contain a statement setting out the circumstances in which the patent was lost or destroyed or cannot be produced together with the fee as specified therefor in the First Schedule.

 

133. Supply of certified copies and certificates under sections 72 and 147.

 

(1) Certified copies of any entry in the register, or certificates of, or extracts from patents, specifications and other public documents in the patent office, or from registers and other records including records in computer floppies, diskettes or any other electronic form kept there, may be furnished by the Controller on a request therefor made to him and on payment of the fee specified therefor in the First Schedule:

Provided that certified copies shall be issued in the order in which the request is filed.

 

(2) Notwithstanding anything contained in sub-rule (1), certified copies shall be furnished within a period of one week if such request is made along with the fee specified therefore in the First Schedule.

 

134. Request for information under section 153.

 

(1) A request for information in respect of the following matters relating to any patent or application for patent shall be admissible, namely:—

 

(a) as to when a complete specification following a provisional specification has been filed or an application for patent has been deemed to have been abandoned;

 

(aa) as to when the information under section 8 has been filed.

 

(b) as to when publication of application has been made under section 11A; (c) as to when an application has been withdrawn under section 11B;

 

(d) as to when a request for examination has been made under section 11B;

 

(e) as to when the examination report has been issued under section 12;

 

(f)as to when an application for patent has been refused;

 

(g) as to when a patent has been granted;

 

(h) as to when a renewal fee has been paid;

 

(i) as to when the term of a patent has expired or shall expire;

 

(j) as to when an entry has been made in the register or application has been made for the making of such entry; or

 

(k) as to when any application is made or action taken involving an entry in the register, publication in the Official Journal or otherwise, if the nature of the application or action is specified in the request.

 

(2) Separate request shall be made in respect of each item of information required.

 

(3) The fee payable on a request to be made under section 153 shall be as set out in the First Schedule.

 

135. Agency.―

 

 

(1) The authorisation of an agent for the purposes of the Act and these rules shall be filed in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed.

 

(2) Where any authorisation has been made under sub-rule (1), service upon the agent of any document relating to any proceeding or matter under the Act or these rules shall be deemed to be service upon the person so authorising him and all communications directed to be made to a person in respect of any proceeding or matter may be addressed to such agent, and all appearances before the Controller relating thereto may be made by or through such agent.

 

(3) Notwithstanding anything contained in sub-rule (1) and (2), the Controller may, if it is considered necessary, require the personal signature or presence of an applicant, opponent or party to such proceeding or matter.

 

 

 

 

 

136. Scale of costs.

 

(1) In all proceedings before the Controller, he may, subject to rule 63, award costs as he considers reasonable, having regard to all the circumstances of the case:

Provided that the amount of costs awarded in respect of any matter set forth in the Fourth Schedule shall not exceed the amount specified therein.

 

(2) Notwithstanding anything contained in sub-rule (1), the Controller may, in his discretion award a compensatory cost in any proceeding before him which in his opinion is false or vexatious.

 

 

 

 

 

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.

 

138. Power to extend time prescribed.

 

(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

 

(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.

 

 

139Hearing before the Controller to be in public in certain cases.—

 

Where the hearing before the Controller of any dispute between two or more parties relating to an application for a patent or to any matter in connection with a patent takes place after the date of the publication of the complete specification, the hearing of the dispute shall be in public unless the Controller, after consultation with the parties to the dispute who appear in person or are represented at the hearing, otherwise directs.

 

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