Introduction
The Rule 137 of the Indian Patent Rules provides discretionary powers to the Controller to condone any irregularity in procedure for complying with the requirements of Indian Patent Acts and Rules. In a recent judgment of the Madras High Court dated April 4, 2024, in the case of R. Vishnu Prasad v. Controller of Patents[1], the court remanded an application for patent to the Controller to dispose of the request made under Rule 137.
Background of the Case
In the said matter, the Appellant’s patent application filed before the Patent Office was deemed abandoned under Section 21(1) due to not filing the response to the First Examination Report within the prescribed time period. However, four days later than the due date, the Appellant did file the response along with a request under Rule 137 for condonation of the irregularity in filing the response. The Madras High Court directed the Controller of Patents to reinstate Appellant’s application from abandon and to take into record the response to the first examination report filed by the Appellant by condoning the delay of four days.
Contentions of the Appellant and Respondent’s Submissions
The Appellant pointed out that such a minor delay is barely worthy of such a harsh consequence of deeming the patent application abandoned under Section 21(1)[2] of the Patents Act, as the provisions of Section 137 provided the respondent (Controller of Patents) sufficient power to condone any irregularity in the procedure. The Appellant filed a response with a delay of four days on September 19, 2023, along with a request under Rule 137 seeking condonation of the delay of four days from the respondent. The Appellant contended that the delay was due to a clerical error. While the last date for submission of objection was September 15, 2023, the date was noted erroneously as October 15, 2023, leading to the delay. The respondent did not strongly contest or oppose the Appellant’s position.
Issues before the Court read with the Relevant Law
In the present case, the prescribed time period of six months to respond to a First Examination Report (FER) was finished, and the Appellant neither filed a reply nor a request seeking an extension of time. However, Rule 137, which provides for the general powers of the Controller, vests sufficient power in that authority to amend and correct any irregularity in procedure, which in the opinion of the Controller may be obviated without detriment to the interests of any person and upon such terms as he may direct.
Thus, the issue in front of the court was whether the Indian Patents Act vests in the Controller the power to condone a delay in submitting a response to the First Examination Report because Rule 137 does not clarify or distinctly mentions that the Controller has the power to condone a delay under Section 12 read with Rule 24B.
Court’s Analysis and Decision
The court held that normally, in matters involving condonation of delay, the Court would not intervene as discretion is vested with the Controller of Patents. The extent of intervention would be limited to an examination of whether such discretion has been exercised in an appropriate manner. However, in the present case, seeing as (i) the delay is only four days, (ii) the Controller failed to address the request for condonation of delay under Rule 137 at all, and (iii) finding the reasons for the delay acceptable, the court held that the delay should be condoned and restored the application back to the file of the Controller to be dealt with in accordance with the law.
Our Analysis
The delay of four days was minimal and was a genuine clerical mistake. The Controller had not exercised discretion under Rule 137 despite promptly filing the application for condonation. The interests of justice favored condoning the delay, as the delay did not prejudice the respondent or affect the substantive rights of any party.
However, this decision begs the question – What is the definition of a “delay?” How many days of delay is condonable? When does a delay become un-condonable? Unfortunately, the Madras High Court did not address these questions in its decision.
The high courts in India have previously reinstated deemed-to-be-withdrawn applications in which a response to the FER was not filed because of the mistake of the applicant’s agent. In this case however, the mistake was not of the agent alone. Thus, this situation begs another question – What are the pre-requisite conditions under which an application may be reinstated?
Seeing the rising number of instances in which deemed-to-be withdrawn applications are reinstated, yet another question that could surface is whether the authorities (the courts or the Indian Patent Office) should consider a directive or an official order clarifying the specific conditions under which such applications may be reinstated. This step could go a long way to avoid (the not always) aggrieved applicants from approaching the court for a solution.
Having said the above, the above curiosities of the mind would only be applicable for cases filed before March 15, 2024, on which the new Indian Patent Amendment Rules, 2024 are not applicable. A discussion of the same follows. Seeing this, it is doubtful the above questions would ever be addressed.
The Patent Amendment Rules, 2024
While this particular case was filed before the new Rules came into effect and thus the new Rules did not apply, a discussion into the Indian Patent Amendment Rules, 2024 is necessary:
In the recent amendments published on March 15, 2024, Rule 137 was amended. Rule 137 previously granted the Controller the authority to rectify procedural irregularities and permit document amendments where the Act has no specific provisions. However, as per the Amendment Rules, 2024, the new Rule 137(1), will no longer apply to certain acts actions, as per new Rule 137(2). Specifically, as per new Rule 137(2), the provisions of Rule 137(1) will not apply to the deadline to file a reply to the first examination report nor its request for extension available under Rules 24B(5) and 24B(6), respectively.
Therefore, in accordance with new Rule 137(2), the Controller does not have discretionary power to condone the irregularity in not complying with the deadline to file a reply to the first examination report nor its request for extension.
This change reinforces the importance of adhering to procedural deadlines, ensuring that the patent prosecution process remains efficient and predictable. By eliminating the Controller’s discretionary power to condone delays for this specific purpose, the amendment fosters a more disciplined approach among patent applicants and their representatives. It reduces the scope for procedural leniency, thereby promoting greater accountability and diligence in managing patent applications.
Moreover, this amendment aligns with global best practices, where strict adherence to deadlines is fundamental to maintaining a robust and reliable patent system. It ensures that patent rights are granted within a reasonable timeframe, providing clarity and certainty to innovators and stakeholders.
Conclusion
Rule 137(1) provides discretionary power to the Controller to amend and correct any irregularity in procedure, which, in the opinion of the Controller, may be obviated without detriment to the interests of any person and upon such terms as he may direct. Typically, courts do not interfere with decisions regarding condoning delays because discretion lies with the relevant authority, i.e., the Controller, who examines the request. The extent of intervention would be limited to reviewing whether such discretion has been exercised appropriately. In the present case, the court believed that the Controller wrongly used his discretionary power, and accordingly, the Court directed the respondent/Controller to reinstate the Appellant’s application and consider its response to the first examination report on its merits.
However, according to new Rule 137(2), which is applicable for all patent applications filed in India after March 15, 2024, the Controller does not have discretionary power to condone the irregularity in not complying with the deadline to file a reply to the first examination report nor its request for extension since new Rules explicitly exclude such provisions. Hence, the condonation of delay in filing a response to the first examination report is impossible under new Rule 137(2) of Patent Rules, 2024.
Nonetheless, if an Applicant cannot file the response to the first examination report within the prescribed time period of six months as per Rule 24B(5), the best option is to first file a one to three-month extension under Rule 24B(6).
[1] CMA(PT) No. 17 of 2024
[2] A patent application shall be deemed to have been abandoned unless, within such period as may be required (6 months+3 months upon request), the Applicant has complied with all statutory requirements as stipulated thereunder