Summary
The Delhi High Court has restored Synertec’s patent application after it was mistakenly deemed withdrawn due to a Patent Agent's error in calculating the Form-18 deadline. The Court ruled in favor of applicant diligence over procedural lapse.
Background
Synertec Pty Ltd (hereinafter “Synertec”) filed Indian Patent Application No. 202217030233 for a system and method for vaporising liquified natural gas. Under Section 11B read with Rule 24B, Synertec was required to file the request for examination (RFE) within 48 months from the priority date, i.e., on or before 27 November 2023. Due to an inadvertent error, the Patent Agent incorrectly informed Synertec that the deadline was 27 November 2024, leading to non-filing of the RFE within the statutory period. As a result, the application was shown on the Patent Office website as “deemed to be withdrawn.” Synertec thereafter filed the present writ petition before the Delhi High Court against the Union of India and the Indian Patent Office (hereinafter “Respondents”), seeking restoration of the application on the ground that the lapse arose solely from the Patent Agent’s error and not from any intention to abandon the invention.
Issues
- Whether the Patent Office erred in marking the application as “deemed to be withdrawn” under Section 11B(4).
- Whether the Court could restore an application deemed abandoned by statutory operation.
Synertec’s Submissions
Synertec argued that it had consistently acted with diligence, timely filed the PCT and national phase applications, pursued corresponding foreign applications (including securing a U.S. patent), and repeatedly followed up with its Patent Agent regarding prosecution steps. Synertec further contended that the only reason for the non-filing of the RFE was the Patent Agent’s admitted miscalculation of the statutory deadline in an email dated 22 October 2022. Placing reliance on European Union v. Union of India, 2022 SCC OnLine Del 1793, and Bry-Air (Asia) Pvt. Ltd. v. Union of India, 2024 SCC OnLine Del 6956, Synertec submitted that courts have restored applications where abandonment resulted from agent error and where the applicant’s intention to prosecute was clear.
Respondent’s Submissions
The respondents contended that the Patent Office had acted strictly in accordance with Section 11B(4), which mandated an automatic consequence of deemed withdrawal if the RFE was not filed within the prescribed period. They argued that the record clearly showed non-compliance and that no error could be attributed to the Patent Office. The respondents submitted that even if Synertec sought equitable relief, the Controller had no choice under the statute once the request for examination was not filed within the prescribed time.
Court’s Analysis
The Court noted that Section 11B(4) and Rule 24B prescribed strict timelines. However, from the communications between Synertec and its Patent Agent, the Court observed that Synertec had no intention to abandon the application. The Court also referred to the judgments in European Union and Bry-Air and observed that where the applicant was diligent and the lapse occurred due to an inadvertent error of the patent agent, the Court may, in writ jurisdiction, intervene to ensure that an unduly harsh consequence does not follow. The Court recognised that the consequence of deemed withdrawal was severe and irreversible, depriving the applicant of potential exclusivity despite having taken all reasonable steps within its control.
Conclusion
The Delhi High Court set aside the “deemed to have been withdrawn” status of Application No. 202217030233 and directed the Patent Office to restore the application and permit Synertec to file Form-18 within two weeks. The writ petition was accordingly allowed.
Citation: W.P.(C)-IPD 53/2025
Link: https://indiankanoon.org/doc/84662294/
Article review and accessibility review by: Dr. Neetha Mohan
