In Indian patent prosecution, a missed mandatory deadline is rarely a fixable problem, and Neurocentria Inc.’s case illustrates precisely what happens when two of the most critical PCT timelines are missed simultaneously, and a belated attempt to restructure the priority claim is offered as the remedy.<\/p>\n
Neurocentria (formerly operating as Magceutics, Inc.) is a California-based pharmaceutical company. In March 2008, it filed PCT International Application No. PCT\/US2008\/058073, claiming priority from three US provisional applications: US 60\/896,458 dated 22 March 2007 (the earliest priority), US 60\/994,902 dated 20 September 2007 (the second priority), and US 61\/066,592 dated 20 February 2008 (the third priority). The application related to magnesium compositions and their therapeutic uses.<\/p>\n
Under Rule 20(4)(i) of the Patent Rules, 2003, read with Article 2(xi) of the PCT, the 31-month deadline for entering the Indian national phase was calculated from the earliest priority date, 22 March 2007, placing the deadline at 22 October 2009. Neurocentria’s first Indian patent agent missed that deadline. On the agent’s advice, Neurocentria filed the national phase application on 15 February 2010, nearly four months late, omitting the earliest priority date from Form 1 entirely and disclosing only the second and third priorities. No accompanying document disclosed any intent to disclaim the first priority. The Patent Office accepted the application, calculating timelines from the second priority date. On that basis, the Request for Examination (RFE) filed on 16 September 2011 also appeared timely.<\/p>\n
The First Examination Report, received in March 2018, raised the objection that the RFE ought to have been filed within 48 months from the earliest priority date of 22 March 2007, making 22 March 2011 the true deadline. Neurocentria’s response, filed in September 2018, explained that the first priority had been disclaimed at filing. A hearing scheduled for August 2019 was not attended due to the first agent’s failure to receive the notice, and the application was refused on 5 August 2019. Following Neurocentria’s representations, an extended hearing was granted in June 2024. Neurocentria had by then replaced its first agent and, through its new agent, filed written submissions along with Form 13 under Section 57(5) of the Patents Act, 1970 seeking voluntary amendment to formally disclaim the earliest priority date.<\/p>\n
By order dated 29 October 2024, the Deputy Controller of Patents treated the application as deemed withdrawn for failure to meet both the 31-month national phase entry deadline and the 48-month RFE deadline from the earliest priority date. Neurocentria appealed to the Delhi High Court under Section 117A of the Patents Act.<\/p>\n
The court examined the statutory framework in detail and held that the timelines at issue admit no flexibility. Rule 20(4)(i) fixes the national phase entry period at 31 months from the priority date as defined under Article 2(xi) of the PCT, which, where multiple priorities are claimed, is the date of the earliest priority application. Rule 22 provides that an international application designating India shall be “deemed to be withdrawn” if these requirements are not met. The court noted that the word “shall” in Rule 22 is mandatory, not directory, as confirmed by the Division Bench in Diebold Self Service Systems v. Union of India<\/em>. That decision had also held that Rule 22 is in consonance with both the Patents Act, and the PCT Rules and that no provision permits extension of the 31-month deadline beyond one month under Rule 138 – a window Neurocentria never invoked and could not have used given a four-month delay.<\/p>\n On the RFE deadline, the court noted that Section 11B(4) of the Patents Act, is equally explicit: if the RFE is not filed within the period specified in Section 11B(1) read with Rule 24B(1)(i), the application shall be treated as withdrawn. The court relied on the Division Bench’s ruling in Carlos Alberto Perez Lafuente v. Union of India<\/em>, which had held that however bona fide an applicant’s belief may be, it cannot seek to evade a rule that is clear and explicit in its enunciation.<\/p>\n The court found that the core flaw in Neurocentria’s case was not that a disclaimer is impermissible in principle, but that it cannot be used to work backward and cure the consequences of missed mandatory deadlines. The court observed that Section 57(5) of the Patents Act, does permit amendment of the priority date, but only in relation to an application that exists in law. Once an application is deemed withdrawn by operation of Section 11B(4) or Rule 22, the Controller cannot entertain any amendment to it. The court followed Nippon Steel Corporation v. Union of India<\/em> precisely on this point, noting that the fact that no limitation period is prescribed for filing an amendment request does not mean the request can be made after the application has ceased to exist in law.<\/p>\n The court further held that Neurocentria’s attempt to disclaim the earliest priority date was, in substance, an attempt to extend the 31-month and 48-month deadlines indirectly. The principle that what is prohibited directly is equally prohibited when attempted through an indirect route was treated as decisive.<\/p>\n The court noted that Neurocentria had filed no document at the time of filing Form 1 to indicate any intent to disclaim the earliest priority date. The earliest priority simply did not appear in Form 1. The court observed that the first formal request for a disclaimer came only through Form 13 filed in June 2024, fourteen years after the application was filed, and only after the Patent Office had raised the timeline objection in the First Examination Report of 2018. The court found that the strategic benefit of omitting the earliest priority date, which kept both the national phase entry and the RFE timelines alive, pointed against the bona fide disclaimer narrative.<\/p>\n The court acknowledged the line of decisions in European Union v. Union of India<\/em>, Bry-Air (Asia) Pvt. Ltd. v. Union of India<\/em>, and Synertec Pty Ltd v. Union of India,<\/em> which had permitted relief where patent agent negligence was found and no fault could be attributed to the applicant. The court observed, however, that those decisions uniformly concerned deadlines that are extendable: in particular, timelines for filing responses to First Examination Reports under Section 21 of the Patents Act. The court noted that the European Union<\/em> ruling itself had explicitly categorised national phase entry timelines and RFE timelines as non-extendable, placing them beyond the reach of even exceptional judicial intervention under Articles 226 and 227 of the Constitution.<\/p>\n The court, therefore, held that patent agent negligence, however well established, cannot serve as a basis for relief where the deadline missed is non-extendable as a matter of statute. The appeal was dismissed.<\/p>\n In view of the observations and the arguments presented by both the parties, the court held that:<\/p>\n Case Citation: <\/strong>Neurocentria Inc. v. Deputy Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 5\/2025, Delhi High Court, decided on 18 May 2026. Available on https:\/\/indiankanoon.org\/doc\/137358450\/<\/p>\n Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels<\/strong><\/p>\n","protected":false},"excerpt":{"rendered":" When Neurocentria Inc. sought to revive its Indian patent application by disclaiming its earliest PCT priority date – effectively restarting the clock on missed deadlines; the Delhi High Court refused. The case raises a pointed question about patent agent negligence and mandatory timelines under the Patents Act, with consequences that every PCT applicant should note.<\/p>\n","protected":false},"author":12,"featured_media":149980,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":4,"footnotes":""},"categories":[5495,6,14],"tags":[13007,486,6358,12947,609,7348,13006,13005,13004,12422],"class_list":["post-149976","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-case-reviews","category-intellectual-property","category-patents","tag-deemed-withdrawn","tag-delhi-high-court","tag-patent-agent-negligence","tag-patent-rules-2003","tag-patents-act-1970","tag-pct-national-phase","tag-priority-date-disclaimer","tag-rule-20","tag-rule-24b","tag-section-11b"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149976","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/12"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=149976"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149976\/revisions"}],"predecessor-version":[{"id":149979,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149976\/revisions\/149979"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media\/149980"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=149976"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=149976"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=149976"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}The Priority Disclaimer Cannot Rescue an Expired Application<\/h3>\n
The Absence of a Formal Disclaimer at Filing<\/h3>\n
Patent Agent Negligence Does Not Override Non-Extendable Deadlines<\/h3>\n
Findings<\/h2>\n
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