Can you revive abandoned/lapsed patents and patent applications in India?

A patent attorney’s job includes tracking and managing deadlines and schedules for each patent case that he or she handles. Every Indian patent has at least ten (10) deadlines on average, and a patent attorney managing a portfolio of one hundred patents must keep track of at least one thousand dates. There are 70% of these deadlines cannot be extended, and if the patent attorney misses them, the patent is considered abandoned, withdrawn, or lapsed. Whether or not an applicant had the intention to abandon these patents is irrelevant, and regardless of the reasons why they missed the deadlines, they are lost. However, that stance has been altered to some extent by a recent Delhi High Court ruling.

Did you have the intention to give up your patent/application?

In BRY-AIR PROKON SAGL & ORS. Vs. UoI and Ors., the Delhi High Court stated that a patent or patent application cannot be construed to have been abandoned, withdrawn, or lapsed, if the patent owner/applicant does not express an intention to forego the patent/application. A non-extendable deadline may be extended only in extraordinary circumstances, but a lack of intention to forgo a patent/application may give rise to such circumstances. The burden is on the patent applicant/patentee to prove that an intent to pursue a patent application or maintain a patent alive existed. In addition to a lack of intent, a lack of contributory negligence also must be established by the patentee/patent applicant. While negligence on the part of the patent agent may be sufficient grounds, the patentee must prove that it was not contributory negligent on its behalf.

When may Patent Deadlines be extended?

Extensions of these deadlines are permissible when there is no intention to forgo them, as noted in the case:

  1. An extension of time to file a FER response after the deadline has passed;
  2. The restoration of lapsed patents after the deadline has elapsed; and
  3. The filing of a national phase application after the 31-month period has elapsed.

The Court only mentioned the three situations, but the reasoning may apply to others also.

How to get relief from errors of the Patent office?

The application/patent may be lost due to technical errors on the part of the patent office. The errors may include:

  1. Technical errors on the part of the patent office’s website/filing system, which may result in the inability to file applications or documents;
  2. Errors in the processing of payments made to the office online;
  3. Clerical errors in the filing/docketing process;
  4. Issues with online hearing facilities/systems; and
  5. Inaccurate delivery of communications.

When these problems are brought to the attention of the responsible controller or technician, the office usually corrects them. However, sometimes, even if no fault is found on behalf of the patentee/applicant, patents/applications may be lost. Under such circumstances, file extensions and deadline extensions are possible, as the applicant had no intention to lose the application or patent. It is important for patent attorneys to acquire and maintain evidence of these errors in order to smoothly revive applications/patents.

Relevant Paras

Relevant paras from the case in question are reproduced hereunder for easy reference:

” 19. From a reading of the aforementioned judgments, the position of law that emerges is that Courts while exercising writ jurisdiction have extended the time for filing response to the FER in extraordinary situations, where Patent Agents were found to be negligent in prosecuting the Patent Applications, with no contributory negligence of the Applicant and on showing that the Applicant had a positive intent to prosecute. It is equally settled that ‘Abandonment’ requires a conscious act on the part of the applicant, which would manifest the intention to abandon and no presumptions can be drawn in this respect. It also needs no reiteration that deemed abandonment of the application for grant of patent, leads to serious impact on the valuable rights of the patent applicant, which flow in favour of an invention and this is compounded by the fact that under the statutory scheme, no appeal is provided against an order of deemed abandonment of the application for patent under Section 21 of the Act. Therefore, each case would require examination on its own facts and circumstances to see the intent of the applicant to abandon.”

“23. It is a settled position of law that errors/negligence on part of the patent agent without any contributory negligence on the part of the Applicant, has been liberally considered by the Courts, as the consequences of a patent application being abandoned or the lapsing of a patent due to non-deposit of renewal fee are very serious, where the applicant loses his right of claiming exclusivity to an invention.

24. A caveat may, however, be added that the Court must exercise the writ jurisdiction only in extraordinary circumstances. In European Union Represented by the European Commission (Supra), the Court has rightly cautioned that the intention of the Legislature in Rule 138 of the Rules as well as the mandate in Section 21(1) of the Act cannot be ignored and failure to adhere to the timelines must be visited with serious consequences.

In the facts and circumstances of the present case, this Court is of the view that there is no fault or negligence on the part of the Petitioners and therefore, they should not suffer for the fault or negligence of the Patent Agent, and the present case fits into the exception of ‘extraordinary circumstances’. Petitioners are thus entitled to file a response to the FERs with respect to the six patent applications so that they can be processed further.”

“26. Relevant would it be to note that In European Union Represented by the European Commission (Supra), patent applications were restored by the Court on account of the negligence of the Agent which coincidentally happens to be the same agent as in this Court and as rightly pointed by the Petitioners in the said case albeit in the case of the patent applications, the writ petition was allowed extending periods of 40 months and 38 months respectively, in respect of two patent applications. In PNB Vesper Life Science Pvt. Ltd., Represented by its Director Mr. P.N. Balaram v. Controller General of Patents, Designs & Trademarks, 2022 SCC OnLine Mad 3190, it was held that if there is nothing on record which indicates that Petitioner has willfully neglected, benefit of doubt must be given and this is an embodiment of a fact which cannot be gleaned over that valuable rights vest in a patentee on grant of a patent and therefore, if the Applicant is not at fault, he should not be deprived of his rights to enjoy the fruits of his skill, hard work and labour.”

Case Citation: BRY-AIR PROKON SAGL & ORS. Vs. Union of India and Others, 2022/DHC/004439


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