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  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.
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 Patents , Ferid Allani v. Union of India , 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.
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 India  and Carlos Alberto Perez Lafuente v. Union of India , 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 India , 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. Nanhku , as also the Full Court decision in Hasti Mal Jain Trading as Oswal Industries v. Registrar of Trade Marks , 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 Patents , 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, , 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 , 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:
- Deadlines that can be extended
- 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 Designs  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.
 W.P.(C)-IPD 5/2022
 W.P (C) 9126 of 2009
 W.P (C) 6836 of 2006
 W.P. (C) 801 of 2011
 W.P.(C) 4573/2012
 4 SCC 480
 2000 PTC (FB)
 W.P.No.6594 of 2013