CHAPTER III

21. Procedure in case of anticipation by prior publication— (1) If the Controller is satisfied after investigation under section 13 that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document referred to in clause (a) of sub-section (1) or sub-section (2) of the said section, the Controller shall communicate the gist of such objections to the applicant and the applicant shall be afforded an opportunity to amend his specification.

(2) If the applicant contests any of the objections communicated to him by the Controller under sub-rule (1) or if he refiles his specification along with his observations whether or not the specification is amended, he shall be given an opportunity to be heard in the matter if he so requires.

¹³[Provided that such request is made on a date earlier than ten days of the final date of the period specified under sub-section (1) or sub-section (2) of section 21.]

(3) If the applicant requires a hearing under sub-rule (2) within a period of one month from the date of communication of the gist of objections or if the Controller considers it desirable to do so, whether or not the applicant has refilled his application, fix a date for hearing having regard to the time remaining for putting the application in order or other circumstances of the case.

(4) When a hearing is fixed under sub-rule (3), the applicant shall be given at least 10 days’ notice of such fixation or such shorter notice as appears to the Controller to be reasonable in the Circumstances of the case and the applicant shall, as soon as possible notify the Controller whether he will attend the hearing.

(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as he thinks fit to be made and may refuse to accept the specification unless the amendment so specified or permitted is made within such period as he may fix.

22. Procedure in case of anticipation by prior claiming-- (1) When it is found that the invention so far as claimed in any claim of the complete specification is claimed in any claim of any other specification falling within clause (b) of sub-section (1) of section 13, the applicant shall be so informed and shall be afforded an opportunity to amend his specification.

(2) If the applicant’s specification is otherwise in order for acceptance and an objection under clause (b) of sub-section (1) of section 13 is outstanding, the Controller may accept the specification and allow a period of two months from the date of its publication for removing the objection.

(3) If an objection under clause (b) of sub-section (1) of section 13 is communicated to the applicant after acceptance of the specification, a period of two months from the date of the communication shall be allowed for removing the objection.

(1) If the applicant so requests at any time, or if the Controller is satisfied that the objection has not been removed within the period prescribed by rule 22, a date for hearing the applicant shall be fixed and the applicant shall be given at least ten days’ notice of the date so fixed. The applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.

(2) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as will be to his satisfaction to be made and may direct that reference to such other specification, as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.

24. Extension of period specified in rules 22 and 23— The periods mentioned in rule 22 or rule 23 may be extended if a request for such extension is made in ¹²[Form 4] before the expiry of such period or the extended period, so, however that the total extension of either period allowed under this rule shall not exceed six months.

25. Form of reference to another specification— When in pursuance of rule 23, the Controller directs that a reference to another specification shall be inserted in the applicant’s complete specification, such reference shall be inserted after the claims and shall be in the following form namely:--

"Reference has been directed, in pursuance of section 18(2) of the Patents Act, 1970, to the specification filed in pursuance of application No…"

26. Procedure in case of potential infringement-- If in consequence of an investigation made under section 13 or section 25, it appears to the Controller that the applicant’s invention cannot be performed without substantial risk of infringement of a claim of another patent, the applicant shall be so informed and the procedure provided in rules 22 to 24 shall, so far as may be necessary, be applicable.

27. Form of reference to another patent—Where the Controller directs that a reference to another patent shall be inserted in the applicant’s complete specification under sub-section (1) of section 19 such reference shall be inserted after the claims in the following form, namely—

"Reference has been directed, in pursuance of section 19(1) of the Patents Act, 1970, to patent No….."

²⁰28. Omitted *****************************************

29. Manner in which a claim under section 20(1) shall be made-- (1)A claim under sub-section (1) of section 20 shall be made in ¹²[Form 6].

(2) The original assignment or agreement or an official or notarially certified copy thereof shall also be produced for the Controller’s inspection and the Controller may call for such other proof of title or written consent as he may require.

30. Manner in which a request may be made— (1) A request under sub-section (4) of section 20 shall be made in ¹²[Form 6].

(2) The consent by the legal representative of the deceased joint applicant required to be given under sub-section (4) of section 20 shall be endorsed on the request.

(3) The request shall also be accompanied by proof of death of the joint applicant and a certified copy of the probate of the will of the deceased or letters of administration in respect of his estate or any other document to prove that the person who gives the consent is the legal representative of the deceased first applicant.

31. Manner of application under section 20(5)— (1) An application under sub-section (5) of section 20 shall be made in ¹²[Form 6] in duplicate and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

(2) A copy of the application and statement shall be sent by the Controller to every other joint applicant and the person making the application shall apply sufficient number of copies for that purpose.

32. Numbering of applications on acceptance of the complete specification— On the acceptance of a complete specification filed in respect of an application, the application shall be accorded a number (called serial number) in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911 (2 of 1911), which shall be the number of the patent which may be sealed in pursuance of the application.

33. Inspection of application, specification, etc.— After the date of advertisement of the acceptance of a complete specification under section 23, the application together with the provisional and complete specifications, the drawings and documents, if any, filed in respect of the application may be inspected at the appropriate office ¹²[by making a written request to the Controller in that behalf].

1.Vide Not. No. S.O. 301(E), dated 20-04-1972, published in GOI(E), dated 20-04-1972, p.p 735-805.