POWERS AND DUTIES OF CONTROLLER OF

DESIGN
SUBMITTED TO: DR S C ROY
FACULTY OF INTELLECTUAL PROPERTY LAW.
SUBMITTED BY:
SHUBHI MISHRA
BBA LLB. (HONS.)
4TH YEAR, 7TH SEMESTER
1439

FINAL DRAFT SUBMITTED FOR THE COURSE OF INTELLECTUAL PROPERTY

LAW.

SEPTEMBER, 2018

CHANAKYA NATIONAL LAW UNIVERSITY, PATNA

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 ACKNOWLEDGEMENT

Writing a project is one of the most significant academic challenges I have ever faced. Though

this project has been presented by me but there are many people who remained in veil, who

gave their all support and helped me to complete this project.

First of all, I am very grateful to my subject teacher Dr. S C ROY without the kind support

and help of whom the completion of the project was a herculean task for me. She donated her

valuable time from her busy schedule to help me to complete this project and suggested me

from where and how to collect information and data.

I am very thankful to the librarian who provided me several books on this topic which proved

beneficial in completing this project.

I acknowledge my friends who gave their valuable and meticulous advice which was very

useful and could not be ignored in writing the project. I want to convey a most sincere thanks

to my parents for helping me throughout the project.

SHUBHI MISHRA

ROLL NO. 1439

7th SEMESTER

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OBJECTIVE OF THE STUDY:
To study all the aspects of design law in India and the current scenario with emphasis to Indian law. The problems
associated with the same.

RESEARCH QUESTION
The general view of the researcher is to find that whether there are any limitations to the powers of controller of
design.

RESEARCH METHODOLOGY:
The researcher has used doctrinal method in her research, that is, extensive use of literary sources and materials.
The researcher mainly uses secondary sources to provide substance to the research analysis. In some cases, the
researcher shall be bound to extract materials directly from the literary work of certain authors which the
researcher intends to adequately cite and notify in due course of time.

SOURCE OF DATA:
The researcher will collect the data from the following sources:

Secondary Sources: Books

Websites
Articles

Limitations of the Study:

Though this is an immense project and pages can be written over the topic due to time, finance, and territorial
constraints the researcher has been compelled to deal with a limited number of concepts only.

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TABLE OF CONTENT
Contents
RESEARCH QUESTION ....................................................................................................................................................... 3

RESEARCH METHODOLOGY:........................................................................................................................................... 3

Limitations of the Study:......................................................................................................................................................... 3

INTRODUCTION................................................................................................................................................................. 5

CHAPTER 1 .......................................................................................................................................................................... 7

CONCEPT OF DESIGN ...................................................................................................................................................... 7

CHAPTER 2 ........................................................................................................................................................................ 11

GENERAL POWER OF CONTROLLER OF DESIGN. ............................................................................................... 11

CHAPTER 3 ....................................................................................................................................................................... 15

DISCRECNARY POWER OF CONTROLLER OF DESIGN ...................................................................................... 15

CHAPTER 4 ........................................................................................................................................................................ 22

DUTIES OF CONTROLLER OF DESIGN ..................................................................................................................... 22

CONCLUSION ................................................................................................................................................................... 25

BIBLIOGRAPHY ............................................................................................................................................................... 25

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INTRODUCTION

Intellectual property (IP) is a term referring to a brand, invention, design or other kind of creation,
which a person or business has legal rights over. Almost all businesses own some form of IP,
which could be a business asset.

Common types of IP include:

Copyright – this protects written or published works such as books, songs, films, web content
and artistic works;

Patents – this protects commercial inventions, for example, a new business product or process;

Designs – this protects designs, such as drawings or computer models;

Trade marks – this protects signs, symbols, logos, words or sounds that distinguish your
products and services from those of your competitors.

IP can be either registered or unregistered.

With unregistered IP, you automatically have legal rights over your creation. Unregistered forms
of IP include copyright, unregistered design rights, common law trade marks and database rights,
confidential information and trade secrets.

With registered IP, you will have to apply to an authority, to have your rights recognised. If you
do not do this, others are free to exploit your creations. Registered forms of IP include patents,
registered trade marks and registered design rights. Copyright is also registerable.

In general, a design is the outer outlook of an article that a naked eye can see. The definition of
a Design as per the act provides that a design means only the features of shape, configuration,
pattern, ornament or composition of lines or colors applied to any article whether in two
5
dimensional or three dimensional or both forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished article appeal to
and are judged solely by the eye, but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device, and does not include any trademark or
property mark or artistic work.

The Design Law in India is governed by the Designs Act, 2000. The old Design Act, 1911 was
amended in 2000 to incorporate the amendments which were rendered necessary because of the
tremendous progress made by India in the field of Science and Technology.

The Controller of Patents is the principal officer responsible for administering the patent system
in India. The Controller is the overall supervisor of the four Indian Patent Offices in Chennai,
Delhi, Mumbai and Kolkata.

The powers of the Controller includes the power: to receive, acknowledge, accept, publish and
examine a patent application, claim, description and specification, to make search and investigate
for anticipation by previous publication and by prior claim to consider the report of the examiners;
to refuse application or require amended application, in certain cases to make orders respecting
division of application; to make orders respecting dating of applications; to make orders regarding
substitution of applicants; to issue written permit to a person resident in India to make an
application outside India for the grant of a patent for an invention; to grant patent to name a few.

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 CHAPTER 1
CONCEPT OF DESIGN
Designs

The laws governing designs are the Designs Act 2000 and the Designs Rules 2001. Designs are
valid for a maximum of ten years, renewable for a further five years.

If you plan to do business in India, or if you are already trading here, it is essential to know how
to use, guard and enforce the rights you have over the intellectual property (IP) that you or your
business own.

Industrial Design protection is provided for a shape, configuration, surface pattern, colour, or line
(or a combination of these), which, when applied to a functional article, produces or increases
aesthetics, and improves the visual appearance of the design, be it a two-dimensional or a three-
dimensional article. As per Indian Law, under the Design Act of 2000, Industrial Design
protection1 is a type of intellectual property right that gives the exclusive right to make, sell, and
use articles that embody the protected design, to selected people only. Protection rights are
provided for a period of 10 years. They can then be renewed once for an additional period of 5
years. Design protection provides geographical rights, like Patents and Trademarks do. To obtain
Design Protection in India, the same has to be registered in India.

The pre-requisites for a design to qualify for protection are as follows:

 It should be novel and original.

 It should be applicable to a functional article.
 It should be visible on a finished article
 It should be non-obvious
 There should be no prior publication or disclosure of the design.

1
The Patents Act, 1970
7
How to obtain Industrial Design protection in India.

The application procedure for Design protection is fairly simple. The Design office provides a
paper filing option as well as an online filing option. All designs are categorized as per the
Locarno Classification for Industrial Designs, and filing is done as per the class that pertains to
the design in question. An application is to be submitted to the design office with the desired
designs, with a classification code and a description of the design. The application then goes
through an examination process, after which the applicant receives a communication from the
Design office regarding any objections, if present. After rectifying the application based on the
objections and responding to the Design Office, the application will be granted if all the
requirements are met. Once granted, and if there is no objection from any third party sources, the
design is exclusive to the owner for the time period mentioned above.

Difference between Patent Protection and Industrial Design Protection.

In some cases, a question may arise as to which type of protection to opt for; it is ambiguous as
to whether industrial design protection, patent protection or copyright protection would be more
relevant. For this reason, here is a detailed difference between patents, industrial designs, and
copyrights, in order to give you a basic understanding of the main aspects of each.

The outer appearance of a product makes it visually more appealing and attractive. This acts as a
value-adding aspect, which in turn increases the marketability of the product. This leads to the
need to protect your creation from third parties’ use, in order to prevent them from taking
advantage of your rights in this world of competition. In many cases, the design itself becomes
the identity of a brand. Some of the most famous examples are Coca Cola’s contour bottle, the
contours of the iPhone/iPad/iPod, and the shape of the Volkswagen Beetle and the Mini Cooper.

When a product’s design is protected, it stops illegitimate products from destroying the brand’s
efficacy and safety. Protection of industrial designs also encourages creativity in the
manufacturing and industrial sectors, which leads to an expansion in commercial activities.

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The old saying goes ‘the first impression is the best impression’. In the case of a product, the
first impression is inadvertently made by the appearance of the product, before the user even
explores its functionality. In this era of creativity, aesthetics and presentation, the overall design
and visual appeal of any product is very significant. Hence, the ability to design a creative
appearance is a marketable talent in itself. So why not protect your creativity and efforts, without
allowing others to use your novel creations? Think beyond just functionality, and look into eye
appeal too.

International considerations

India has been a World Trade Organisation (WTO) member since 1995. WTO member nations
must include some IP protection in their national laws. This means that if you are doing business
with India, you will find some similarity between local IP law and enforcement procedures, and
those in force in the UK.

Intellectual Property Rights in India

Treaties and reciprocal agreements

India is also a signatory to the following international IP agreements:

The Paris Convention – under this, any person from a signatory state can apply for a patent or
trade mark in any other signatory state, and will be given the same enforcement rights and status
as a national of that country would be;

The Berne Convention – under this, each member state recognises the copyright of authors from
other member states in the same way as the copyright of its own nationals;

The Madrid Protocol – under this, a person can file a single trade mark application at their
national office that will provide protection in multiple countries;

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The Patent Cooperation Treaty – this is a central system for obtaining a ‘bundle’ of national
patent applications in different jurisdictions through a single application.

India is not a signatory to the Hague Agreement, which allows the protection of designs in
multiple countries through a single filing.

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 CHAPTER 2
GENERAL POWER OF CONTROLLER OF
DESIGN.
The Controller of Patents is the principal officer responsible for administering the patent system
in India. The Controller is the overall supervisor of the four Indian Patent Offices in Chennai,
Delhi, Mumbai and Kolkata.

The powers of the Controller includes the power: to receive, acknowledge, accept, publish and
examine a patent application, claim, description and specification, to make search and investigate
for anticipation by previous publication and by prior claim to consider the report of the examiners;
to refuse application or require amended application, in certain cases to make orders respecting
division of application; to make orders respecting dating of applications; to make orders regarding
substitution of applicants; to issue written permit to a person resident in India to make an
application outside India for the grant of a patent for an invention; to grant patent to name a few.
Earlier on the 3rd of August the Bombay High Court disposed a writ petition filed by one Bharat
Bhogilal Patel, inventor who had been granted two patents by the Patent Office, Mumbai for the
following inventions: (i) ‘A process of manufacturing engraved, design articles on metal or non-
metal’ and (ii) ‘An improved engraving and marking machine with laser technology’. Apparently
Mr. Patel had approached the Customs Commissioner to have his patent rights enforced under
the IPR Enforcement Rules, 2007. It appears he requested the Customs Commissioner to seize all
imports that allegedly infringed his patents.

The infamous Ramkumar case wherein a small inventor had successfully enforced his patent
rights under the IPR Enforcement Rules, 2007 to seize cellphone imports of huge companies like
Micromax & Samsung on the grounds that they were violating his patents. Ultimately Customs
Authorities released the consingments after it was sucessfully argued that Ramkumar’s patents
were of dubious quality.
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This time however the Commissioner of Customs has refused to enforce Bharat Bhogilal Patel’s
dubious patents because of which he moved the Bombay High Court. The High Court disposed
the writ once the Commissioner of Customs agreed to give Mr. Patel a formal hearing.

The first patent bearing application no: MUM/610/1998 was granted as patent no: 189207. The
second application bearing no: MUM/611/1998 was granted as patent no: 188787. It is also
interesting to note the examination procedure itself wherein the examiner had to plead with the
patentee to file the basic documentation such as title deeds etc.

Both patents were in fact granted by Patent Examiners on behalf of the Controller. Every letter
from the patent office to the applicant/patentee, in both file wrappers, is signed by the Examiner
on behalf of the Controller. This includes the letter informing the applicant that his patent has
been in order for grant. Not a single communication from the Patent Office is signed by the
Controller.

As per the Patent Act, 1970 only the Controller of Patents can grant patents. This is
understood from a joint reading of Section 14, 15, 16, 17, 18, 19, 20, 21, 25 & most importantly
Section 43.2 All these Sections refer to only the Controller. The term Controller is defined in
Section 2(2)(a) and Section 73 of the Patent Act, 1970. As per Section 73(2) the Controller
General of Patents may appoint as many examiners and other officer and with such designations
as it thinks fit. As per sub-clause 3 of the same provision, the Controller General of Patents may
delegate his functions under the Act to such ‘officers’ who are appointed under sub-clause 2. The
Controller General of Patents delegates his function through the issuance of Office Circulars. I’m
guessing these officers are designated as ‘Deputy Controller of Patents, Joint Controller of Patents
or Assistant Controller of Patents’.

Moreover as per the scheme of the Patent Act under Chapter IV, the examination and grant of
patents is a two-tiered structure i.e. under Sections 12 and 13 it is the Examiner who examines
the intial patent application for obviousness and anticipation before submitting a report of the

2
The Patents Act, 1970, at Section 35.
12
same to the Controller under Section 14. After the Examiner submits the report to the Controller
under Section 14 the Act vests the power to grant or deny a patent under Section 15, 42 etc. lies
only with the Controller and not the Examiner. The fact that the Controller may have signed the
Patent Certificates is insignificant in the overall analysis since as clarified by the Delhi High
Court in the case of Dr. Snehalata v. Union of India a patent is effectively granted when the
patent office communicated the same to the patentee through a letter. Therefore subsequent acts
such as the patent certificate and the entry into the registry of patents are only administrative
functions. The main decisions pertaining to the grant of a patent have already been communicated
through the letters signed by the examiners.

II. Can the Controller further sub-delegate his power to an Examiner.

As per the correspondence in our custody it appears that the Examiners in both cases have signed
on behalf of the Deputy/Asst. Controller of Patents. This would imply that the Deputy/Asst.
Controller of Patents has sub-delegated his powers to the Examiners. The substantial question of
law therefore is whether or not the Deputy/Asst. Controller of Patent can delegate powers which
themselves have been delegated to him under Section 73 of the Patents Act, 1970. In my opinion
such sub-delegation is illegal and will be dismissed by a Court of Law. I have outlined the reasons
for the same below.

A fundamental maxim of administrative law is delegates non potest delegare. This basically
means ‘one to whom power is delegated, cannot himself further delegate that power’. There are
several Supreme Court precedents upholding this very fundamental principle.

In the leading case of Sahni Silk Mills (P) Ltd. And Anr. vs Employees’ State Insurance
Corporation JT 1994 (5) SC 11, the Supreme Court, in pertinent part held the following:

By now it is almost settled that the legislature can permit any statutory authority to delegate its
power to any other authority, of course, after the policy has been indicated in the statute itself
within the framework of which such delegatee is to exercise the power. The real problem or the
controversy arises when there is a sub-delegation. It is said that when Parliament has specifically

13
appointed authority to discharge a function, it cannot be readily presumed that it had intended
that its delegate should be free to empower another person or body to act in its place.

It is therefore implied that while delegation of powers under Section 73 by the Controller General
of Patents is valid, the same cannot be further delegated by the designated controller to the
examiner. Both patents therefore suffer from a gross error in law and should be set aside in case
a writ petition is filed against them by the importers.

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 CHAPTER 3
DISCRECNARY POWER OF CONTROLLER OF DESIGN

1.1THE GENERAL POWERS OF CONTROLLER

The powers of the controller are generally enumerated in Section 77 of the Patents Act, 1970. He
shall have certain exercising powers of a Civil Court under the CPC, 1908 while trying a civil
suit. These include summoning of witnesses and enforcing the attendance of witnesses; Receiving
evidence on affidavits; Issuing commissions for the examination of witnesses of documents;
Awarding costs; etc.

This also includes power to Review his own decisions on application made within the prescribed
time and in the prescribed manner and setting aside an order passed ex-parte on application made
within the prescribed time and in the prescribed manner; sub section 2 also makes it clear that
orders passed by the Controller shall be executable as a decree of a Civil Court.

Section 78 provides for correction of any clerical error in any patent or in any specification or
other document filed in pursuance of such application or in any application for a patent or any
clerical error in any matter which is entered in the register. In the case of Press Metal Corporation
Limited v. Noshin Sorabji Pochkanwalla1, it was held that the power to correct clerical errors
under Section 78(1) does not extend to make amendments suo moto3. Thus, amendments have to
be strictly made only under Section 57 of the Act.

In the case of AIA Engineering Ltd. v. Controller of Patents, it was held that, while purporting
to exercise powers under Section 78 of said Act, there could not be any amendment of application
as in that eventuality procedure of Section 57 read with Section 59 of said Act must be followed
- There appears to be also absence of any power of Controller to make any amendment suo motu
- Therefore, impugned order could not be sustained as it suffers from a patent error and improper

3
The Designs Act, 2000
15
exercise of jurisdiction by Assistant Controller and was liable to be set aside. "While exercising
powers under Section 78 of the Patents Act, which permits correction of clerical errors,
amendment is not permissible for allowing amendment the procedure of Section 57 read with
Section 59 of the Act must be followed.»

1.2 DISCRETIONARY POWERS OF THE CONTROLLER

1.2.1 Discretionary power of the controller under Section 3(d)

In the case of Novartis Ag v. Union of India, the court held that Section 3(d) did not violate
Article 14 of the Constitution of India and was not vague or arbitrary, and did not confer
uncontrolled discretion to the Patent Controller. The court rejected Novartis's arguments that
Section 3(d), which denies patents to new uses of known substances unless the patentee can show
"enhancement of the known efficacy" or "differing significantly in properties with regard to
efficacy," was ambiguous and unclear. The court emphasized that discretionary power did not
necessarily mean that it would be discriminatory. The Patent Controller's discretionary power
under Section 3(d) in deciding whether a known substance has enhanced efficacy did not
automatically lead to an arbitrary exercise of discretionary power or discrimination against
Novartis.

1.2.2 Discretionary power of the controller under Rules 137 & 138

Section 80 deals with how discretionary powers should be exercised by the Controller. It
specifically refers to applications of Patents and amendments of Patents. The controller has to
give the parties an opportunity of hearing.

Section 81 gives power to the controller to extend time. And no appeal shall lie from the order of
the Controller granting extension.

In the case of Nokia Corporation vs Deputy Controller Of Patents and Designs4, it was held that
Courts and statutory authorities were to do substantial justice - Object of Rule 138 was that
prescribed time under Rule 20 could be extended by period of one month on showing of sufficient
cause - Therefore, it was discretion of Controller to extend period on facts and circumstances of
16
case - However, it was not correct on part of Deputy Controller to have rejected Application, by
treating it to be not maintainable, as having been filed after expiry of prescribed time under Rule
20 of the Patents Rules - Thus, impugned order was quashed and case was remanded back to
Deputy Controller to decide Application moved under Rules 137 & 138 in accordance with law.
"Authority shall not reject application for condonation of delay if application is filed after
prescribed delay."

In the case of Nippon Steel Authority v. UOI5, it was held that there is no time limit prescribed
for filing application for amendment of priority date, it does not mean that such application can
be filed even after patent application ceases to exist in law – Once application is deemed to have
been withdrawn by applicant in terms of Section 11-B (4) of Act, Controller of Patents cannot
entertain application for amending any portion of such application - It is not possible to accept
submission of petitioner that Controller of Patents is bound to allow amendment at any time, even
after deemed withdrawal of such application, and that once such amendment is allowed it would
relate back to date of filing of application and thereby revive the application –

It is beyond doubt that Controller of Patents could not have, after deemed withdrawal of
Petitioner's patent application, permitted it to amend priority date of such application, Petitioners
could not be held to have abandoned their claims for purposes of Section 21 of the Act. As far as
the present case is concerned, Petitioner missed deadline for filing RFE, Court finds no error
whatsoever in the impugned decisions of Controller of Patents to decline Petitioner's request for
amendment of priority date - Writ petition is without merit and it is dismissed.

1.3 Power of the Controller under Section 8(2)

Section 8 (2) gives power to the Controller to ask for any information regarding the 'processing'
of the application in a country other than India at any time before the grant of patent. Section 8
(2) of the Act and rule (12) of the Rules provides discretionary power conferred upon the
controller and hence an applicant has to make sure that the information is submitted to the
satisfaction of the controller. The controller has conferred with the powers to sustain the objection
or reject the grant if he is not satisfied with the extent of the information disclosed.
17
In the case of Chemtura Corporation vs. Union of India6, the Delhi High Court on the question
of submission under section 8 (2) held that the applicant was required to periodically update the
controller on the current status of the corresponding foreign application. Mere simply filing of
information on the status of the application will not fulfill the obligation under section 8 (2) of
the Act. Applicant is required to submit all foreign search reports.

In Tata Chemicals vs. Hindustan Lever, the petitioner argued that the respondent had not filed
the International Preliminary Examination Report (IPER) and hence not full filled the section 8
obligations. The Intellectual Property Appellate Board (IPAB) held that the IPER is related to the
processing of an application in country outside India and the word processing is an all
encompassing word, it would take within it a series of actions to be taken in order to achieve a
particular result. Therefore the respondent is required to file the IPER in order to comply with the
requirements of section 8(2).4

1.4 The powers of the Controller under Section 17

 Under this the Controller has the power for postdating an application which are fettered by
the provision of Section 9(1) that a complete specification must be filed within 12 months
from the date of filing of the application. This issue was considered in the case of
Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd`, wherein the judge while considering the
provisions of postdating clearly stated in paragraph 8 that "The aforesaid provisions make
it crystal clear that postdating of the patent can be done only to the date of filing of the
complete specifications". This makes it clear that the date of the provisional specification
cannot be postdated.

2. Other Powers

 Power of the Controller of Patents includes

 Power to remedy a clerical error committed during prosecution.

4
https://spicyip.com/2010/09/is-it-lawful-for-examiners-to-grant.html.
18
  Power to issue compulsory licenses, power to adjourn applications for compulsory licenses,
power to strike out any stay proceedings.
 Power to call information from patentees.
 Power to revoke surrendered patents.
 Power of controller to give directions to coowners of patents.
 Power of controller to refuse or ask for amended applications etc.

The year 2011 witnessed two important High Court judgments - Nokia Corporation v Deputy
Controller of Patents and Designs [W.P. No.2057 of 2010 and M.P.No.1 of 2010 - High Court
of Madras] (Nokia case) and Nippon Steel Corporation v Union of India [W.P. (C) 801 of
2011 - High Court of Delhi] (Nippon Steel case) regarding, inter alia, procedural timelines that
need to be adhered to during patent prosecution and the discretionary powers of the Controller
under the Patents Act, 1970 (“the Act”) to extend the time-lines and condone delays in appropriate
cases. It is important to discuss the principles laid down in both these decisions and the apparently
contrasting manner in which both decisions have approached the issue before them.

Whereas the Nokia case dealt with the powers of the Controller to allow a national phase
application to be filed beyond the 31 month deadline, the Nippon Steel case dealt with the powers
of the Controller to allow an amendment of priority after the applicant had failed to file a request
for examination within the 48-month deadline. 5

In the Nokia case, the High Court of Madras held that if the Controller thinks fit, i.e., upon the
applicant showing sufficient cause for the delay, applicants wishing to file a national phase
application in India could do so within 32 months from the

earliest priority date. Therefore, a national phase application along with petition under Rule 138
of the Patent Rules, 2003 can be made within one month after 31 months has elapsed from the
earliest priority of the international application. The Court specifically noted that the ‘prescribed

5
https://spicyip.com/2010/09/is-it-lawful-for-examiners-to-grant.html.
19
period’ under Rule 138(2) included the one month extension period and hence, so long as an
appropriate application under Rule 138 is moved within one month from the 31 month deadline,
the Controller had to exercise his discretion in deciding whether to extend the time-line or simply
dismiss the application. In the course of its judgment, the High Court of Madras noted that the
courts and the Controller ought to act in a manner so as to do substantial justice.

On the other hand, in the Nippon Steel case, the High Court of Delhi held that once the 48-month
time-period for filing a request for examination (RFE) has elapsed, the patent application was
deemed to have been withdrawn under Section 11B (4) of the Patents Act. Hence, logically, there
was no patent application in the eyes of the law and consequently, a request for amending the
priority date under Section 57(5) could not be accepted after the 48 month time period to file the
RFE had elapsed. Interestingly, the Court held that time-lines prescribed in the statute and/or the
rules are not merely ‘directory’ in nature but rather, are mandatory, which need to be strictly
complied with.

Recent decisions of the IPO, New Delhi

In two of the decisions rendered on 1st August 2011, the Delhi IPO had the occasion to deal with
facts similar to ones in the aforesaid cases. In both the cases, the national phase entry date was
missed and was attributed to docketing error and non-receipt of e-mail. Petitions, inter alia, under
Rules 137 and 138 were filed in both cases, with a request to condone the delay, obviate
irregularity in procedure and extend procedural formality deadlines (national phase entry and
RFE filing), which were rejected by the Patent Office.

Regarding the petitions under Rules 137 and 138, the Deputy Controller disregarded the Nokia
case and instead chose to rely on the Nippon Steel case. The Deputy Controller was of the view
that since the Nippon Steel case was more recent and the Delhi IPO fell under the jurisdiction of
the Delhi High Court rather than the Madras High Court, he was to apply the principles enunciated
in the Nippon Steel case. The Deputy Controller also held that in view of the opinion rendered in

20
the Nippon Steel case, the time-lines prescribed in the Act and the Rules are all mandatory in
nature and no relaxation of statutory deadlines can be read into the law. Hence, in both the cases,
the petitions under Rules 137 and 138 were rejected.

Even on facts, the Deputy Controller was of the view that the ground of ‘docketing error’ did not
constitute sufficient cause to justify the extension of time since the same was an internal issue of
the agent, which ought to have been addressed by the applicant/agent. The Deputy Controller also
highlighted that there was no evidence that this alleged ‘docketing error’ resulted in similar delays
in other countries as well. The Deputy Controller further went on to state that there was no
evidence to show that ‘due care’ was taken by the applicants. He also noted that India had not
agreed to the reinstatement of priority rights with WIPO, as provided for under Rule 49.6 of the
PCT Regulations. Accordingly, the authority was of the opinion that there was no reason for
condoning the delay, the effect of which would essentially be to restore the lost priority rights.
Therefore, the request for extension of time beyond 31 months could not be allowed and the delay
in filing the national phase application could not be condoned.

21
 CHAPTER 4

DUTIES OF CONTROLLER OF DESIGN

Most of us are familiar with provisions in Patents Law related to secrecy directions on inventions
relevant for defence purposes and the security of India; however, similar secrecy directions are
also provided under the Designs Law. This article highlights the provisions in the Designs Law
for imposing secrecy directions on designs and analyses possible remedial options available to
the proprietors when such secrecy directions are imposed.

Provisions in Designs Law

A design refers to features of shape, configuration, and ornamentation applied on an article, which
are judged based solely on their aesthetic appeal. Innovations in designs may occur in the fields
which are prejudicial to the security of India. Therefore, provisions relating to imposing secrecy
of such designs are provided in the Designs Act, 2000 (the Designs Act) to prevent publishing of
such sensitive information which otherwise would be made public by the operations of the
Designs Act, 2000.

A design is considered to be prejudicial to the security of India if the design is to be applied to an

article used for war, or applied directly or indirectly for the purposes of defence related articles6.
Under Section 46 of the Designs Act, the Controller shall not publish or otherwise disclose any
information relating to a design, if he considers the design is prejudicial to the security of India.
The Controller is also empowered to cancel a registered design if such registered design is
notified, by the Central Government to be prejudicial to the security of India.

The Designs Act read with The Manual of Designs Practice and Procedure (the Designs Manual)
clarifies that a design application is not registrable if the design is prejudicial to the security of
India. The Designs Manual directs that while examining a design application, the examiner shall
determine whether the design under consideration is prejudicial to the security of India. If the
Examiner finds that the design is prejudicial to security of India, he shall report the same to the

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Order 1 – Applicant: Information in Place Inc. USA: http://124.124.193.235/decision/1494-DELNP-2010-787/1494-delnp-2010.pdf
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Controller. If the Controller agrees with the view of the Examiner, the Controller may raise an
objection under Section 46 of the Designs Act in an examination report while issuing the same to
the proprietor of the design application. The Controller, in parallel, refers the design application
to the Defence Research Development Organization (DRDO), Ministry of Defence, Government
of India, to analyze the application and provide its views.

 Remedies against refusal of a design application

The Designs Manual mentions that a design application, if objected under Section 46 of the
Designs Act, shall proceed further if the DRDO is of the view that the design is not prejudicial to
the security of India. However, unlike the Patents Act, the Designs Act provides the proprietor of
the design application an opportunity to provide arguments or explanation in response to an
objection raised under Section 46 in the examination report. The proprietor also has an option to
request for a hearing with the Controller to further discuss this and address the objection. If the
Controller refuses to register the design application under Section 46 after considering the
arguments or explanation of the proprietor, then the proprietor has an option to appeal to the High
Court, under Section 5(4) [see end note 6] of the Designs Act, against such refusal by the
Controller.

 Remedies against cancellation of a registered design

If a registered design is cancelled by the Controller under Section 46(b), there are no provisions
in The Designs Act that provide any remedy to the proprietor of a registered design if the
proprietor believes that the Controller has erred in cancelling the registered design. The
proprietor, in such a case, has an option to file a writ petition, at the High Court, justifying that
the Controller has erred in cancelling the registered design under Section 46 for being prejudicial
to the security of India.

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 CONCLUSION
An amendment was brought in the Patents Act, in the year 2005, the new law states

that the Controller of Patents has a series of wide-ranging discretionary powers to

determine all kind of criteria like reasonable affordability, reasonable pricing, and

reasonable royalty. These powers are nor arbitrary and the general powers of the

controller are that of a Civil Court under the CPC 1908.

The order of the Controller refusing a design application or cancelling a registered

design under Section 46 is not final. The proprietors aggrieved by such orders of the

Controller under Section 46 can seek appropriate remedies, as explained under

previous headings, before the High Court.

BIBLIOGRAPHY
The Patents Act, 1970, at Section 35.
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The Designs Act, 2000, at Section 46.
The Designs Act, 2000, at Section 2(d).
The Designs Act, 2000, Explanation to Section 46.
The Designs Act, 2000, at Section 46(b).
The Designs Act, 2000, at Section 5(4) reads “The Controller may, if he thinks fit,
refuse to register any design presented to him for registration; but any person
aggrieved by any such refusal may appeal to the High Court.

https://spicyip.com/2010/09/is-it-lawful-for-examiners-to-grant.html
https://www.lexology.com/library/detail.aspx?g=831f1291-bb26-40eb-b907-
1c446db9b2fe
References
1. Order 1 – Applicant: Information in Place Inc. USA:
http://124.124.193.235/decision/1494-DELNP-2010-787/1494-delnp-2010.pdf
2. Order 2 – Applicant: Abbott Laboratories, USA:
http://124.124.193.235/decision/5402-DELNP-2011-789/5402-
DELNP%202011.pdf

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