Selfdot Technologies (OPC) Pvt Ltd v Controller General of Patents, Designs & Trade Marks (2023)

Summary

“The appellant challenges an order dated 06.10.2020 rejecting Patent Application No.201843023004 on the ground of contravention of Section 39 of the Patents Act, 1970 (the Patents Act). The appellant admittedly first filed Patent Application No.2822/CHE/2014 in the Indian Patent Office in respect of the parent invention.” ... “When the appellant decided to file an application for a patent of addition, such application was first filed in the US Patent Office without applying for and obtaining permission under Section 39 of the Patents Act. After obtaining the US patent under US Patent No.10,467,840 B2 on 05.11.2019 for the Continuation-in-Part (CIP), which is equivalent to a patent of addition under Indian law, the present application was filed before the Indian Patent Office. On the ground that the patent applicant contravened Section 39 of the Patents Act, the application was deemed to be abandoned under Section 40 thereof.” (para 1) Counsel for the appellant “contended that Section 39 is not applicable because the parent was first filed in India” (para 2); “learned counsel for the respondent submitted that the mandate of Section 39 of the Patents Act is clear and that it does not admit of any exception for a patent of addition.” (para 4)

The Court framed the question “whether the expression ‘any application for the grant of a patent for an invention’ in sub-section (1) of Section 39 would apply to a patent of addition” (para 6). It concluded “that the appellant did not intend to circumvent the requirements of Section 39 and that there is credibility in the assertion of bona fide belief that permission under Section 39 was not necessary” (para 11), but held that “the reasoning of the respondent in the impugned order in support of the conclusion that a patent of addition stands on a different footing from a divisional application is sound and cannot be faulted” (para 12). It held that “the words ‘contravention of Section 39’ in Section 40 are intended to apply to situations where there was a clear breach of the written permit requirement” (para 13), and that “the breach committed by the appellant would, at worst, qualify as a technical breach but would not trigger the deemed abandonment under Section 40 of the Patents Act.” (para 14) “For reasons set out above, the impugned order is set aside. Consequently, the matter is remanded for reconsideration of Patent Application No. 201843023004.” (para 15)

What the court decided

1. The admitted facts. “From the contentions advanced by the parties, it is evident that the facts are undisputed. The respondent admits and acknowledges that the appellant applied for a patent in respect of the parent invention in India before applying outside India. From the claims relating to the parent patent, it is evident that it is an invention relating to the method for determining authenticity or tampering of a security label and the method of recording colour profiling in relation thereto.” ... “This document discloses that the patent of addition relates to a method for an automated authentication of the security label. The US Patent Office granted a patent for the patent of addition. Thus, both the parent invention and the claimed patent of addition are not relevant for defence purposes or related to atomic energy. The claimed patent of addition is undoubtedly ancillary to the parent invention. On account of the relevant facts being admitted, the case turns on the interpretation of the applicable provisions of the Patents Act.” (para 5)
2. Section 39 after 2005. “Prior to amendment by the 2005 Amendment Act” (“Patents (Amendment) Act, 2005”), “Section 39 was restricted in scope to applications outside India for the grant of patent for an invention relevant for defence purposes or related to atomic energy. By virtue of the amendment, the provision has been made applicable to inventions in all fields, provided the applicant for the grant of patent is a resident of India. On the facts of this case, it is undisputed that the appellant/applicant is a resident of India.” (para 6)
3. The written permit. “The operative portion of sub-section (1) of Section 39 restrains a person resident in India from making an application outside India for grant of patent for an invention without obtaining a written permit from the Controller. Clauses (a) and (b) of sub-section (1) carve out exceptions, but such exceptions are admittedly inapplicable to the present case. On closely examining Section 39, the provision does not expressly refer to either patents of addition or to divisional applications. The first question that, therefore, arises is whether the expression ‘any application for the grant of a patent for an invention’ in sub-section (1) of Section 39 would apply to a patent of addition.” (para 6)
4. The Controller’s distinction. In the impugned order “the respondent considered the case of a divisional application and differentiated a divisional application from a patent of addition by holding as under” (para 7): “In case of filing of divisional applications, subject matter of divisional application is already fully disclosed in parent application. Therefore when permission is granted for filing of parent application it covers permission to all disclosed subject matter of that parent application.” ... “But in case of patent of addition application, additional subject matter is disclosed over the parent (main) application and hence the subject matter in patent of addition application is not fully disclosed by the parent/main application. Therefore, permission granted for parent/main application does not cover the permission for patent of addition application.” (para 7) “From the above extract, it is evident that the respondent concluded that permission under Section 39 would not be required if a divisional application were to be filed by a person resident in India after having first filed the application for the parent invention in India. The reasoning supporting such conclusion is that a divisional application can only be filed in respect of matters disclosed in the complete specification of the parent application. The respondent also concluded that a patent of addition stands on a different footing because additional matter may be disclosed in the complete specification relating thereto.” (paras 7–8)
5. Ambiguity in Section 39. “Nevertheless, the discussion and reasoning of the respondent underscores that there is ambiguity in Section 39 of the Patents Act, and that interpretation thereof is necessary to determine whether it applies to patents of addition and divisional applications pursuant to the first filing of the application for the parent invention in India. The appellant stated that it was of the bona fide opinion that approval was not required for filing the application for the patent of addition because the application in respect of the parent invention was first filed in India. In order to determine whether the above assertion is credible, it becomes necessary to examine the provisions relating to patents of addition.” (para 9)
6. Links to the main invention. “The provisions relating to a patent of addition indicate that a patent of addition is linked to the parent or main invention in multiple ways. By way of illustration, the application for grant of a patent of addition cannot be filed earlier than the date of filing of the application for grant of patent for the main invention; it cannot be granted before grant of the patent for the main invention; the term of the patent of addition shall not exceed that of the main invention, even if granted later than the main invention; and the complete specification of the main invention shall be taken into account to determine novelty of the claim for a patent of addition.” (para 11)
7. The appellant’s bona fide belief. “By taking into account the statutory prescription relating to a patent of addition, the nature of the parent invention and the claimed patent of addition and, most importantly, the admitted position that the application for grant of patent for the parent invention was first filed in India, I conclude that the appellant did not intend to circumvent the requirements of Section 39 and that there is credibility in the assertion of bona fide belief that permission under Section 39 was not necessary.” (para 11)
8. Independent patentability. For the appellant: “By focusing attention on the expression ‘an invention’ in sub-section (1) of Section 39, learned counsel submitted that the same expression finds place in sub-section (1) of Section 54 of the Patents Act, which deals with patents of addition.” (para 2) For the respondent: “Learned counsel referred to the proviso to Section 55 of the Patents Act and pointed out that a patent of addition would survive even if the patent relating to the parent invention is revoked.” (para 4) The Court held: “Notwithstanding such strong links, both sub-sections (1) and (2) of Section 54 and the proviso to sub-section (1) of Section 55 indicate that the invention forming the subject of a patent of addition is capable of being patented independently. The nature of a patent of addition, i.e. involving an improvement in or modification of the parent or main invention, would invariably require additional disclosures to those contained in the complete specification of the main invention.” (paras 2, 4, 12)
9. Patent of addition and divisional. “Therefore, I conclude that the the reasoning of the respondent in the impugned order in support of the conclusion that a patent of addition stands on a different footing from a divisional application is sound and cannot be faulted. Whether the omission of the appellant falls within the scope of the expression ‘contravention of Section 39’ in Section 40 remains to be considered.” (para 12)
10. Section 40 and its history. “Section 40 provides that an application for grant of patent outside India, if made in contravention of Section 39, would result in the application for patent under this Act being deemed to be abandoned. It also provides that the patent, if granted in those circumstances, shall be liable to be revoked under Section 64. Originally, Section 40 only applied to a contravention of directions as to secrecy under Section 35. Under Act 38 of 2002, it was extended to a contravention of Section 39. At that time, the scope of Section 39 was limited to inventions relevant for defence purposes or related to atomic energy. Later, when the scope of Section 39 was expanded, this provision was not amended.” (para 13)
11. Contravention of Section 39. “The conclusion that emerges is that the words ‘contravention of Section 39’ in Section 40 are intended to apply to situations where there was a clear breach of the written permit requirement in respect of inventions in all fields, including, in the specific context of inventions relevant for defence purposes or atomic energy, the requirement of prior consent of the Central Government. Because Section 40 deals with substantive infractions of Section 39, by legal fiction, drastic consequences for such infractions are prescribed.” (para 13)
12. The legal fiction. “A legal fiction, such as the fiction incorporated in Section 40, is intended to serve a particular purpose. In this case, the purpose is to prescribe the consequences of a clear breach of Section 39, as opposed to procedural irregularities, and the scope thereof should not be extended beyond such purpose. For this settled proposition, it is sufficient to refer to Bengal Immunity Company Limited v. State of Bihar, 1955 SCC OnLine SC 2 and Mancheri Puthusseri Ahmed v. Kuthiravattam Estate Receiver, (1996) 6 SCC 185.” (para 14)
13. A technical breach. “The triggering event for the application of the legal fiction of deemed abandonment in Section 40 is the contravention of Section 39. In the facts and circumstances outlined above, the breach committed by the appellant would, at worst, qualify as a technical breach but would not trigger the deemed abandonment under Section 40 of the Patents Act.” (para 14)
14. Remand and Rule 137. “For reasons set out above, the impugned order is set aside. Consequently, the matter is remanded for reconsideration of Patent Application No. 201843023004. It is open to the Controller to impose terms on the appellant in respect of the procedural violation by taking recourse to Rule 137 of the Patents Rules 2003 or any other applicable provision. After providing a reasonable opportunity to the appellant, the application for a patent of addition shall be disposed of on merits within a period of four months from the date of receipt of a copy of this order.” (para 15) The appeal “is disposed of on the above terms without any order as to costs.” (paras 15–16)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 10 October 2026.