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Is It Possible To Reinstate Your Patent Application In India? – Patent


Introduction

The Indian Patent Law has often been deemed as one of the most
rigid and austere laws in the world, with limited flexibility,
especially in terms of deadlines. However, contrary to the popular
belief, there have been instances where the Indian courts have
restored patent applications even when they violated a statutory
deadline under the Indian Patents Act, 1970 (hereinafter
“Act”).

The recent case of The European Union, represented
by The European Commission v/s Union of India & Ors
1
was one such case in which, the single
judge bench of Delhi High Court restored two applications that were
“deemed to be abandoned” due to non-filing of a response
to the first examination reports issued in the respective
matters.

Facts of the Case

The Petitioner, The European Union, represented by The European
Commission engaged the European Law Firm, M/s FREYLINGE to file and
prosecute two PCT National Phase Indian Patent Applications,
11123/DELNP/2012 dated 21st December 2012 and 3466/DELNP/2013 dated
18th April 2013, who contracted a patent agent in India,
(hereinafter ‘first patent agent’) for the same.
Subsequently, the applicant transferred the two applications to
another European firm, M/s GEVERS in June 2017. The first patent
agent confirmed the receipt of the instructions that the files had
been transferred.

First Examination Reports (FER) for the two applications were
issued by the Indian Patent Office on 10th April 2018 and 29th June
2018 respectively. M/s GEVERS wrote multiple emails to the first
patent agent, requesting the report and invoice for the request for
examination that was filed in respect of the concerned
applications, however, received no reply. They also sent several
reminders regarding the status of the applications via emails.
However, M/s GEVERS did not get any response from the first patent
agent. In the meantime, the applications were “deemed to be
abandoned” as a response to the FERs could not be filed within
the stipulated period of six months from the date of issuance of
the examination report, or within the stipulated extended period of
3 months.

The applicant aggrieved by non-receipt of any communication from
the first patent agent, transferred the concerned applications to
another Indian Firm (hereinafter, ‘second patent agent’) in
February 2019, who, after learning of the abandonment, submitted a
response to the FERs on April 29, 2019, with emails addressed to
the Patent Office seeking a hearing. In absence of any reply, the
present writ petitions were filed, seeking setting aside of the
order of abandonment and revival of the applications.

Petitioner’s Arguments

In the writ petitions, the Petitioner relied on the grounds that
the delay in filing the response to the FER was completely not
attributable to the Applicant. Despite continuous follow-ups, the
first patent agent had not responded, leading to a delay in filing
the responses. Therefore, the delay deserves to be condoned as the
Petitioner’s valuable rights in the patents have been
completely lost due to the negligence of the first patent agent,
through no fault of the Petitioner.

Further, the Petitioner submitted that the subject patent
applications are international applications filed and granted in
several jurisdictions.

Furthermore, the Petitioner relied on various judgments, such
as Telefonaktiebolaget Ericsson v. Controller of
Patents2, Ferid Allani v. Union of
India3,
etc., passed by the courts in India that
clarify that the Controller may not have the power to condone the
delay in filing the response to the FER, however, while exercising
writ jurisdiction under Article 226 and 227 of the Indian
Constitution, the Courts can, in exceptional
circumstances
, permit the Applicant to rectify the defect
and restore the application.

Respondent’s Arguments

The Indian Patent Office submitted that the deadlines fixed
under the Act are strict in nature while relying on judgments such
as Nippon Steel Corporation v. Union of India4 and
Carlos Alberto Perez Lafuente v. Union of India5,

which confirm that when there is a delay in filing the request for
examination, if the prescribed time period has lapsed, the same
cannot be extended thereafter. The timelines provided in the Indian
Patents Rules, 2003 (as amended) (hereinafter, ‘Rules’) are
mandatory, and not directive in nature.

Rule and/or Law

According to Section 21 of the Indian Patents Act, 1970,
“An application for a patent shall be deemed to
have been abandoned
unless, within such period as may
be prescribed, the applicant has complied with all the requirements
imposed on him by or under this Act…”

According to Rule 24B, of the Indian Patents Rules, 2003 (as
amended),”(5). The time for putting an application in order
for a grant under section 21 shall be six months from
the date on which the first statement of objections is issued to
the applicant
to comply with the requirements”
and “(6). The time for putting an application in order for a
grant under section 21 as prescribed under sub-rule (5) may be
further extended for a period of three
months
on a request in Form 4 for extension of time
along with the prescribed fee, made to the Controller before expiry
of the period specified under sub-rule (5).”

Therefore, the entire process of objections and replies thereto,
further objections and replies thereto, has to be concluded within
the maximum time limit of six months, extendable by three
months.

Further, according to Rule 138, “(1)
Except for the time prescribed in
clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20,
rule 21, sub-rules (1), (5) and (6) of rule

24B, sub-rules (10) and (11) of rule
24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and
sub-rules (1) and (2) of rule 130, the time prescribed by these
rules for doing of any act or the taking of any proceeding
thereunder may be
extended by the Controller for a
period of one month
if he thinks it fit to do so
and upon such terms as he may direct. (2) Any request for extension
of time prescribed by these rules for the doing of any act or the
taking of any proceeding thereunder shall be made before the expiry
of the such time prescribed in these rules.”

Thus, from the bare disclosure of Rule 24B, it is clear that the
Controller does not possess the power to extend the time period for
submitting a response to the FER under Rule 24B(5) or (6).

Furthermore, we discuss herein below a few judgments that were
relied upon by both the parties as well as the Court for arriving
at its decision in this matter:

In Ferid Allani v. Union of India3, a decision
concerning response to FERs, it was held, “The impact [of the
deemed abandonment of an application for grant of the patent] is
prescribed inasmuch as the applicant is deprived of the valuable
rights which flow in favor of any invention as are guaranteed under
Section 48 of the Patents Act.” While relying on the
observations in Browning Manufacturing Co. v. Brothers Inc., 134
USPQ 231, the court had held that “the question of
abandonment is fundamentally a question of intent, though express
or implied by action or conduct. Abandonment is never
presumed.
” The Court then applied the judgment
in Kailash v. Nanhku6, as also the Full Court decision
in Hasti Mal Jain Trading as Oswal Industries v. Registrar of Trade
Marks 7, and held that the requirement under
Rule 24B(4)(1) of the Rules as it then stood was directory and not
mandatory in nature. The Controller was held to be empowered to
extend the time for a period of one month, so long it was within
the overall period of three months

Similarly, in Telefonaktiebolaget Ericsson v. Controller of
Patents2, it was held that
“abandonment” requires a conscious act on the
part of the Petitioner which would manifest the intention to
abandon the application.”

On the other hand, in Nippon Steel Corporation v. Union of
India,4, a decision related to delay in filing of
Request for Examination (RFE), it was held, “There is a logic
to the time limits set out under the Act. The scheme of the Act and
the Rules require time-bound steps to be taken by applicants for
the grant of the patent at various stages. The
provisions of the Act and the Rules have to expressly reflect the
legislative intent to permit relaxation of time limits, absent
which such relaxation cannot be ‘read into’ the provisions
by a High Court exercising powers under Article 226 of the
Constitution.
In other words, it is not possible for
this Court to accept the submission of the learned Senior counsel
for the Petitioner that the time limits under Section 11-B(1) of
the Act read with Rule 24-B of the Rules, notwithstanding Section
11-B(4) of the Act, are merely ‘directory’ and not
mandatory. In fact, the wording of Section 11-B(4) of the Act
underscores the mandatory nature of the time limit for filing an
RFE in terms of Section 11-B(1) of the Act read with Rule 24-B of
the Rules.”

Similarly, in Carlos Alberto Perez Lafuente v. Union of India
[5], the Division Bench had held, “the language
used in the Rule (24B) is as clear as it could be, the petitioner
could not have ignored the same and gone by his own logic.
Howsoever bona fide he may have been in his conduct, he cannot seek
to evade the rigor of the law, which is so clear and explicit in
its enunciation.”

Observations and Decision of the Court

The Court divided the deadline fixed in the Act and Rules into
two categories:

  1. Deadlines that can be extended

  2. Deadlines that cannot be extended (such as deadlines relating
    to entry of the application into the national phase, timelines for
    filing of a request for examination, and timelines for putting an
    application in order for the grant).

However, relying on Ferid Allani (supra), Telefonaktiebolaget
Erricson (supra), and PNB Vesper Life Sciences (supra), the Court
held that in cases concerning the abandonment of applications due
to non-filing of a response to the FER (“first statement of
objections”), although the Controller may not have the power
to extend the deadline under Rule 138, however, the courts
may exercise writ jurisdiction
under Articles 226 and 227
of the Indian Constitution, in rare cases, after examining
the factual matrix to see as to whether the Applicant in fact
intended to abandon the patent or not. Any extraordinary
circumstances could also be considered by the Court, such as
negligence by the patent agent, docketing error, and whether the
Applicant has been diligent. However, lack of follow-up by the
Applicant would be a circumstance which may lead to an inference
that the applicant intended to abandon the patent. Thus, the court
would have to examine the circumstances in the peculiar facts of
each case.

The Court observed that in the present matter, the Applicant had
no intention to abandon the application at all, as evident by the
facts that a) the request for examination was filed timely, b)
there was continuous correspondence between the law firms involved,
and c) repeated attempts were made to contact the first patent
agent and follow up was done on the status of the Petitioner’s
applications, which were within the stipulated 6+3 months
period.

Further, the Court remarked upon the essential role of patent
agents in prosecuting patent applications, and liberally considered
the effects of their inadvertent errors, which could lead to a
patent being abandoned. The Court held that the consequences of the
patent being abandoned are quite extreme i.e., the Applicant is
deprived of exclusivity for the invention completely.

It was held that if the Applicant did not have an intention to
abandon and if the Court is convinced that there was a mistake of
the patent agent and the Applicant is able to establish full
diligence, the court ought to be liberal in its approach. The
mistake of the patent agent would be similar to the mistake of an
advocate who may be representing parties in any civil or criminal
litigation. Insofar as any mistake committed by counsels/advocates
is concerned, the settled legal position is that the litigants
ought not to suffer, as has been laid down by the Supreme Court in
a number of decisions.

Having said the above, the Court cautioned that the intention of
the Legislature in Rule 138 of the Rules cannot be ignored by the
Controller, nor can one ignore the express language of Section
21(1) of the Act, which mandates a deemed abandonment in case of
non-compliance with the requirements imposed under the Act.
It is only in extraordinary cases, while exercising writ
jurisdiction, that the Court may consider being flexible, and this
would depend on the facts of each case as to whether a condonation
ought to be given at all.

The court held that applications 11123/DELNP/2013 and
3466/DELNP/2013 fall under exceptional circumstances. Therefore, it
was directed that the response to the FER shall be taken on record
by the patent office. The application nos. 11123/DELNP/2013 and no.
3466/DELNP/2013 shall be restored to its original position. The
examination of the said patent shall be proceeded with by the
patent office and the same shall be concluded within a period of
six months.

Analysis and Conclusion

A deciding factor in the Court’s judgment was the 161st
report submitted by the Department Related Parliamentary Standing
Committee on Commerce, titled ‘Review of the Intellectual
Property Rights Regime in India’ which takes note of the
enormous prejudice being caused to patent applications due to
‘deemed abandonment provisions’ that demoralize patentees
in India.

It must be noted that the present matter is just one of the many
in which a “deemed to be abandoned” application (either
due to the mistake of the patent agent, or otherwise) has been
restored by the Courts. In a similar matter of NTT DOCOMO Inc v.
Assistant Controller of Patents and Designs8 for a
patent application concerning technology for increasing the rate of
transmission in mobile and radio networks, the said application was
mistakenly withdrawn by an Indian agent. Similar to the present
matter, NTT DOCOMO transferred the patent application to another
Indian Agent, Kan and Krishme, who, after the failure of efforts
with the Indian Patent Office for reinstatement, filed a writ
petition in Madras High Court against the Indian Patent Office. The
Single Judge Bench of Madras High Court allowed the writ petition
and directed the Controller of Patents to reinstate Patent
Application no. 4851/CHENP/2007. The Court stated that the
inadvertence of the withdrawal is apparent and that the
petitioner’s patent application should be allowed to be
prosecuted.

In all of the above-discussed cases, the Courts have highlighted
the importance of the role of a patent agent and the ramifications
of mistakes on his part. The Courts apply the principles of the
contract of agency as enshrined in Section 212 of the Contract Act,
1872, by virtue of which the patent applicant becomes the Principle
and the person to whom the Power of Attorney is assigned, i.e., the
Patent Agent, his Agent.

Therefore, while the Indian Patent System is often considered to
be archaic and excessively stringent by other jurisdictions,
pro-applicant decisions such as these continue to shine India in a
positive light, and justifiably so. At the same time, the present
case serves as a reminder to applicants as well as their agents to
take the deadlines stipulated under the Indian Patents Act strictly
and to take all necessary measures to abide by the same.

Footnotes

1 W.P.(C)-IPD 5/2022

2 W.P (C) 9126 of 2009

3 W.P (C) 6836 of 2006

4 W.P. (C) 801 of 2011

5 W.P.(C) 4573/2012

6 4 SCC 480

7 2000 PTC (FB)

8 W.P.No.6594 of 2013

9 https://www.financialexpress.com/archive/court-relief-on-ntt-docomos-patent-plea-for-network-tech/1239087/

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about your specific circumstances.



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