1980 PLP 641 (CLC)

(c) an application in form 4 requesting for extension of time to file a full statement of opposition after three months with the prescribed fee of Rs. 75 for extension of three months. 2. it has been further averred in the petition that upon the presentation of the said documents, the petitioner's Advocate/agent's clerk was informed that the fee for filing of the notice of opposition had been Rs. 50 and as such he could take back such notice and wait till the Advocate/ agent receives an intimation from the respondent of the said increase. However, the cashier of the respondent No. 1 accepted the other two sets of docu ments as mentioned above along with tie payment . of Rs. 75 for which he issued a receipt. It has beer. further asserted that subsequently the respondent No. 1 published a nooration fearing No. 1033 dated 29-6-1977 describing it as special notice dated 1977 in which the respondent No. 1 gave a revised Schedule of the increase in fee: However, in the meantime on 21-6-1977 the petitioner's Advocate agent, Mr. Nazim Jiwa after seeing the office of the respondent No. 1 and inquiring as to why no intimation was sent for the amount of the fee deposited Rs. 50 the required fee for the notice of opposition on the aforesaid date for which the respondent No. 1 had issued a receipt (Annexure D to the petition).

3. After that the petitioner noticed a Gazette dated 6-7-1977, in which the respondent No. adventured that the aforesaid patent No. 125598 under the bracket dealing on-.". This was done without considering the opposition filed by the Consequently, the petitioner's Advocate/ agent made an inquiry, where upon petitioner was informed that it should make 4 representation writing. In pursuance whereof the petitioner's Advocate through his letter dated 13-7-1977 (sent under registered AID) reiterated the facts stated hereinabove in paras. 1 and 2 pertaining to the filing of the opposition etc. It was also pointed out that when the petitioner's Advocate did not receive any intimation about the correct amount of fee, he personally called at the office of the respondent No. 1 and after making out inquiries paid the said amount of Rs. 50 against a receipt. It was also pointed out that a complete list of all the three sets of documents was given to the agent of .the respondent No. 2 Mr. Munawar Ghani, Advocate who received the said set on 9-6-1977 and a copy of the said letter bearing his due acknowledgement was filed in the office of the respondent No. 1 to bring it on record. The respondent - No. 1's attention was also invited to the fact that the relevant period was full of turmoil in view of the political situation in the country resulting in strikes and forcibly being kept away from attending the normal course of business. It was urged that the petitioner had bled the opposition within time and, therefore, the respondent No. 1's advertisement for sealing the patent without considering the petitioner's objections was unjustified. The respondent No. 1 was requested to consider the petitioner's opposition before proceeding with the sealing of the patent, in question, but the respondent N4. 1 declined to consider the petitioner's opposition on the pie that the notice of opposition was not filed within the prescribed period with the prescribed fee, The petitioner has filed this petition for challenging the respondent No. 1's aforesaid action. The respondent No. 2 has become a party to the above petition in persuance of an order of this Court on it's application for impleading it as a party to the petition.

4. In support of the above petition -Mr. Nazim G. Jiwa, Advocate has contended that the respondent No. 1's act to proceed with the sealing of the patent without considering the petitioner's notice of opposition is illegal and mala fide. On the other hand, Messrs Habibur Rehman and Munawar Ghani learned counsel for the respondents have conten ded that the respondent No. I s act to proceed with the sealing of the patent is in accordance with law inasmuch as the petitioner failed to file the notice oh opposition with the prescribed fee within the prescribed time and, therefore, in ]awl there was no opposition to the respondent No. 2's applica tion for the grant of patent. The respondents Nos. 1 and 2 have filed counter affidavits. The respondent No. 1 in his counter affidavit has admitted the assertions contained in the petition as to the tendering of 3 sets of documents including the payment of Rs. 75 on 9-6-1977 and of tendering of Rs. 10 along with a notice of opposition. However, it has been denied that the respondent No. 1's clerk concerned had told the petitioner's Advocate! agent's clerk that the respondent -No. I's office would send an intimation about the correct fee. The respondent No. 1 has also asserted that as the petitioner had fail to filed the notice of opposition with the prescribed fee within the prescribed period under section 9 of the Act, no valid opposi tion was filed in law. It has also been asserted that the acceptance of Rs. 50 fee on 21-6-1977 by the office of the respondent No. 1 would not confer any right on the petitioner. The respondent No. 2 in its counter affidavit also reiterated that there was no notice of opposition filed by the petitioner within time with the prescribed fee and, therefore, the respondent No. 2 was entitled to get its patent registered.

5. In order to appreciate the respective contentions of the learned counsel for the parties, it will be advantageous to refer to the relevant sections of the Patents and Designs Act, 1921 (hereinafter referred to as- the Act) and Patent and Design Rules, 1933 (hereinafter referred to as the Rules). Section 9 of the Act provides that any person may on payment of prescribed fee at any time within 4 months from the date of advertisement of the acceptance of the application give notice at the Patent office of opposition to the grant of patent on the grounds specified in clauses (a) to (e) of subsection (1) of section

9. Subsection (2) of the said section provides that where such notice is given the Controller shall give notice of the opposition to the applicant and shall on the expiry of those four months, after hearing the applicant and opponent, if desirous of being heard, decide the case. Where as, subsection (3) of section 9 lays down that the decision of the Controller shall be. subject to an appeal to the Central Government. Furthermore, subsection (1) of section 10 provides that when there is no opposition or no case of opposition after the determination is in favour of the grant of a patent the patent shall on payment of the prescribed fee be granted subject to such conditions (if any) as the Central Government thinks expedient, the applicant and the Controller shall cause the patent to be sealed with the seal of the Patent Office. Subsection (2) of section 10 provides that a patent shall be sealed as soon as may be and not after the expiration of 24 months from the date of the application. Whereas, section 12 lays down that the patent sealed with the seal of the Patent Office shall, subject to other provisions of the Act, confer on the patentee the exclusive privilege of making, selling and using the invention throughout Pakistan or authorizing others so to do. Section 14 provides that the duration of the patent shall save as otherwise expressly provided by the Act, be 16 years from its date. Subsection (1) of section 57 provides that there shall be paid in respect of grant of patent and registration of design and application therefore, in respect of other matters with relation to patent and design under the Act such fee as may be prescribed by the Central Government,. whereas sub section (2) of the said section provides that a proceeding in respect of which a fee is payable under this act or the rules , made thereunder, shall be of no effect unless fee has been paid.

6. Rule 3 of the Rules lays down the procedure of filing of application and other documents at the office of the respondent No. 1 which includes the delivery by hand or through post. Rule 4 provides the filing of address for service by the applicant or opponent. Whereas rule 5 lays down inter alia the manner in which the fee is to be deposited/paid and the power of the Controller to condone the delay in payment of fee for the reason contained in clause (b) of the said Rule. It may be advantageous to reproduce the above Rule which reads as follows :- "5.-(1) The fees to be paid in respect of the grant of patents and the registration of designs, and applications therefore, and in respect of other matters with relation to patents and designs under Act, shall be those specified in the First Schedule to these rules, hereinafter referred to as the prescribed fees: Provided that no fees shall be payable in respect of any secret patent, and every such patent notwithstanding the non-payment of such fees shall remain in force for the full period of 16 years from its date. (2)(a) Fees may be paid in cash at the office or may be sent by money order or postal order or cheque on a Scheduled Bank as defined in the State Bank of Pakistan Act, 1956 (XXXIII of 1956) payable to the Controller at Karachi, and if sent through the post shall be deemed to have been paid at the time when the money order or the properly addressed and prepaid letter containing the cheque or the postal order, would be delivered in the ordinary course of post. (b) Cheques not carrying the correct addition for commission, and other cheques-on which the full value cannot be collected in cash within the time allowed for payment of the fee, shall be accepted only at the discretion of the Controller. (c) Stamps shall not be received in payment of fees." Rule 20 provides that notice of opposition to the grant or amend ment etc. of a patent shall be given in duplicate, one copy of the notice shall be sent by the Controller to the applicant or his agent. Whereas rule 21 provides that within 14 days of giving a notice of opposition the opponent shall leave at the office full written statement in duplicate stating out the full nature of the opponent's interest and the facts upon which he bases his case and the relief which he seeks. It further provides that the Controller shall furnish the applicant with a copy of the statement. It also lays down that as to how the evidence is to be filed by the parties in support of the application and in opposition to it. Whereas rule 22 provides that on the completion of these proceedings or at such other time as he may see fit, the Controller shall appoint time for the hearing of the case and shall give the parties not less than 10. days' notice of such hearing. It further provides that if either party desired to be heard he shall leave form 7 at the office. It also gives discretion to the Controller to hear any party who has not left from 7 prior to the date of hearing. Rule 23 provides the procedure of sealing of the patent.

8. The sole question for consideration in this petition is as to whether in view of the facts stated hereinabove the respondent No. 1 was justified in treating the filing of opposition notice by the petitioner out of time, and was justified in refusing to consider the opposition notice before proceeding with the sealing of the patent. 1t is an admitted position as pointed out hereinabove, that on 9-6-1977 when the petitioner's Advocate/agent's clerk tendered 3 sets of documents referred to hereinabove in pare. 1, the period of 4 months had not expired as it was to expire on 1-6-197 7, as asserted by the. respondents in their counter-affidavit. It is also an admitted position that the respondent No. 1 accepted Rs. 75 on 9-6-1977 in relation to the above opposition notice for granting extension of time of 3 months for filing the full statement of facts, under rule 21 of the Rules. It is also an admitted position that another sum of Rs. 10 was tendered for the'' opposition notice which was not accepted by the clerk of the respondent l No. I on the plea that the above fee was -not prescribed fee and that the correct fee was Rs.

50. According to the learned counsel for petition' there was some confusion as the amount of the fee for the reason that a new gazette containing the schedule of fee was expected to be issued the respondent No. I's office and, therefore, the respondent's clerk concerned informed the petitioner's Advocate/agent's, clerk that the petitioner would be intimated about the correct fee. It is also clear that in fact the respondent No. 1, published a notification dated 17-6-1977 gazetted on 29-6-1977 (Annexure C to the petition) in which he gave revised Schedule of the increased fee. It may be pertinent to reproduce the caption of the above notification which reads as follows :- "The revised Schedule of fee which appeared in the gazette of Pakistan dated 21st dune 1976, and came into effect with effect from 21st August 1976, is reproduced below for general' information of the public."

9. There is also no controversy on the fact that before the enforcement of the revised Schedule with effect from 21-8-1977the fee payable for the notice of opposition was Rs.

10. It is not understandable as to why the revised Schedule. which was effective from 21-8-1976 and which was published in the Gazette dated- 21st June 1976 had to be republished on 29-6-1977. We are inclined to believe the version given by the learned counsel for the petitioner that there was some confusion about the quantum of fee and in order to remove the above confusion it was considered by the respondent No. 1.. necessary to republish the revised Schedule in the Gazette. In opt view the respondent No. 1 was not justified in shutting out the petitioner on the plea that the petitioner had failed to file the notice of opposition with the prescribed fee within the period prescribed under section 9 of the Act. The petitioner had deposited Rs. 75 on 9-6-1971 which amount was sufficient not only to pay the revised prescribed fee for the notice of opposition but also for extension of one month's time for the filing of full statement in opposition after the expiry of 14 days provided under rule 21 of the Rules from the date of filing of the notice of opposition. It may be pertinent to observe that on 9-6-1977 there was no need of filing of an' application for extension of time for filing full statement in opposition and there was no requirement to pay Rs. 75 as the petitioner could bean extension application on any day before the expiry of 14 days provided for filing toll statement of opposition from the date of notice of opposition under the aforesaid rule 21 of the Rules. In fact the petitioner deposited even Rs. 50 on 11-6-1977 which was before the expiry of the aforesaid 14 days statutory period for filing full statement of opposition,

10. Form 4 requesting for extension of time referred to hereinabove cannot be divorced from the notice of opposition in Form

6. The former Form for extension of time for filing full statement in opposition cannot be entertained unless the notice of opposition is filed. At no some the respondent No. I asked the petitioner to collect back the aforesaid amounts of Rs. 75 and Rs. 50 deposited by it. The superior Courts always favour providing of hearing to a party, who is likely to be adversely affected by an act,/decision~. The effect of non-suiting of the petitioner in the application for registration) of the patent will be that the petitioner will be deprived of- dealing in the product in which it has been dealing as by virtue of section 12 of the Act on sealing of the patent the respondent No. 1 shall become the patentee with the right of exclusive privilege of making, selling and using with the exclusion of others. In our view the respondent No. 1 was not justified in non-suiting the petitioner on a highly technical ground in such a serious matter, particular when the petitioner had deposited Rs. 75 within the period of four months on 9-6-1977, which amount was sufficient to cater for the fee of the notice of opposition and one month's extension fee after the expiry of 14 days from the expiry of 4 months from the date of the Gazette of inviting opposition as per rule 21 of the Rules referred to hereinabove. In our view there was substantial compliance of subsection (1) of section 9 of the Act-by the) petitioner.

11. We are also of the view that even otherwise it was a fit case where the respondent No. 1 would have been justified in condoning the delay, if any, by virtue of the doctrine that no act/omission on the part of a Court) should prejudice a party. In the instant case, as observed hereinabove we are inclined to believe that there was some confusion as to the corrects amount of fee payable in respect of the notice of opposition and that the petitioners Advocate/agent's clerk might have been informed by the respondent No. 1's clerk concerned that the petitioner would be intimated about the correct fee as the notice dated 17-6-1977 containing the revised Schedule) of fee was published in the gazette dated 29-6 1977 referred to hereinabove immediately after the above incident. It may he observed that rule 5(2)(b)l quoted hereinabove in para. 6 confers discretion on the Controller to condone the delay relating to the payment of fee in the cases specified therein. Without going into the question as to whether the aforesaid rule could be invoked in the instant case, it will suffice to say that the condonation of delay is not foreign to the Act and the Rules There are many other provisions in the Act and the Rules empowering the Controller to extend time for the acts specified therein. Before parting with the above discussion we may observe that Mr. Nazim G. Jiwa the learned counsel for the petitioner has also urged that the respondent No. 2's application ought not to have been accepted as it violates inter alia section 5 of the Act, we do not wish to comment upon it, as it will be for the respondent No. 1 to consider the same.

12. In view of the above discussion we allow the petition and declare that the respondent No. 1's act to ,proceed with the sealing of the patent without providing an opportunity to the petitioner to be heard in opposition as per rule 25 of the Rules is without lawful authority and of no legal effect. The case is remanded to the respondent No. 1 who shall proceed with the hearing of the notice of opposition and will decide the same in accordance with law. There will be no order as to costs. Case remanded.