Power of controller to review/setting aside his own decision/order

Power of controller to review/setting aside his own decision/order

July 5, 2022 By Khyati Dave

To acquire right of patent over innovative and novel inventions the applicant has to pass through different stages of patent procedures defined under Patent Law. Sometime it happens that due to lack of clarification or understanding with legal provisions and procedures, the deserving applicants loses the rights over a potential patent protection and benefits thereof.

Such circumstances may include situations like missing the mandatory timeline for a step of the process of the patent registration, for example, filing of request for examination, filing of response to examination report within prescribed time or rejection of patent during examination procedures like after submitting response to examination report or hearing submissions where the applicant fails to prove patentability of the invention before the controller of patent due to insufficient justification or lack of adequate description support at the time for the inventiveness of the claimed invention. In such circumstances, the Controller refuses to grant the patent that sometimes is not acceptable to the applicant who missed the necessary deadlines due to reasonable reasons like errors in the system/records or the applicant who is sure about the patentability of the invention. In such cases the applicant deserves to be heard and for the review of such orders.

There are certain powers conferred to the Controller of patent that are similar to powers of a Civil Court, said powers are specified in the section 77 of Indian Patent Act, 1970. The powers specified in section 77 includes the power of reviewing his own decision on application made within the prescribed time and in the prescribed manner (section 77(1)(f)).

In view of section 77(1)(f), any person (the applicant/ opponent/ party) aggrieved by any decision or order of the Controller can file an application for review or setting aside controller’s decision or order. An application to the Controller for the review of his decision under clause (f) of sub-section (1) of section 77 shall be made 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 allow on a request for extension of time on Form-4 along with prescribed fee.

An application for review shall be made on Form-24 and shall be accompanied by a statement setting forth the grounds on which the review is sought. One of the following grounds can be put forward to make the application for review of the order or decree to the Controller:

  • The discovery of new and important matter or evidence which, after the exercise of due diligence was not within his knowledge or could not be produced by him at the time when the order or decree was passed or order made, or
  • On account of some mistake or error apparent on the face of the record, or
  • For any other sufficient reason, desires to obtain a review of the decree passed or order made against him.

The order passed by the controller upon reviewing the order in view of the grounds submitted by the aggrieved party, shall be considered as the final order, and no further appeal can be filed with respect to revision of said order.

Therefore, it is evident that the application to review/setting aside controller’s own decision/order is an important and final remedy for any aggrieved party to correct the possible unforeseen or unintended errors, either made at the end of the applicant or at the end of the Controller, to convert the decision or order in favour of the righteous party.

At Parker & Parker, the aggrieved parties are provided with best guidance for all possible remedies available under the Patent Act in order to secure their interest and rights.

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