Deakin University, a public university in Australia, developed a unit that simulates the use of a fire extinguishing system so that firefighters can be trained hands on before they face real fires. It applied for an Indian patent for this invention, titled Firefighter Training Unit, under Indian Patent Application No. 201747029902.<\/p>\n
The petitioner filed Australian Patent Application No. 2015900587 on 20 February 2015 and International Application No. PCT\/AU2016\/050115 under the Patent Cooperation Treaty on 19 February 2016. Through its Australian patent attorneys, Phillips Ormonde Fitzpatrick (POF), it engaged an Indian firm, Strategic Intellectual Property Solutions, Bangalore (STRAT IP), which filed the Indian national phase application on 23 August 2017. The request for examination was filed on 19 February 2019, and the First Examination Report (FER) was issued on 25 November 2020.<\/p>\n
STRAT IP sent the FER to POF on 26 November 2020. The reply was due on 25 May 2021 and could be extended by three months. On 21 May 2021, POF asked STRAT IP to seek the extension. On 22 May 2021, STRAT IP replied that all deadlines stood automatically extended by the orders of the Supreme Court during the pandemic, and that no extension application was needed at that stage.<\/p>\n
The petitioner said that STRAT IP then stopped communicating. It did not tell POF about the later Supreme Court orders in In Re: Cognisance for Extension of Limitation, Suo Motu Writ Petition (Civil) No. 3 of 2020, including the final order of 10 January 2022 that ended the extension of limitation. POF sent detailed instructions for the reply on 26 August 2022, and reminders on 23 and 24 November 2022. There was no response. On 25 November 2022, POF approached another firm, M\/s. Groser & Groser, and learnt that the application was treated as deemed abandoned under Section 21(1).<\/p>\n
Groser & Groser filed Form 13 on 22 December 2022, with a fresh General Power of Authority and a fresh Form 1. On 3 September 2024, they filed a petition under Rule 137 of the Patents Rules, 2003, dated 2 September 2024, with the reply to the FER, the prescribed fee and twenty two exhibits. Reminders followed, including letters dated 16 May 2025 and 25 June 2025, but the petition was not decided. The Patent Office records still showed the application as abandoned. Deakin University then filed WP(IPD) No. 22 of 2026 before the Madras High Court.<\/p>\n
The Court held that under Section 21(1) of the Act, read with Rules 24B(5) and 24B(6), the reply to the FER had to be filed within six months, extendable by three months. These time limits are mandatory, and the Controller has no power to extend them. The Court agreed with the respondent on this point. In other words, the Patent Office could not have saved this application even if it wanted to.<\/p>\n
The Court then said it does not follow that the High Court is powerless. It noted that the Delhi High Court, in The European Union and in Bry Air, had held that in extraordinary cases a writ court may restore such an application where the applicant never intended to abandon it and the loss was caused by the default of its patent agent. The mistake of a patent agent is treated like the mistake of an advocate, for which a litigant ought not to suffer, and abandonment, being a conscious act, cannot be presumed. The Madras High Court had taken the same view in NTT DoCoMo.<\/p>\n
The Court also added a caution. Since the words of Section 21(1) cannot be ignored, the power is to be used sparingly. The applicant must show from the record that it never gave up the application and that its loss was the result of its agent’s default.<\/p>\n
The Court held that both requirements were met. The correspondence placed before the Patent Office showed that POF asked STRAT IP to seek an extension on 21 May 2021, sent detailed instructions on 26 August 2022 and sent reminders in November 2022. STRAT IP, the registered agent to whom the FER was sent, had told its client on 22 May 2021 that time stood extended. It never informed its client when the Supreme Court’s orders changed, and it neither acted on nor acknowledged the instructions it received.<\/p>\n
The Court noted that when the petitioner learnt of the abandonment on 25 November 2022, it changed its agent within a month and later filed the Rule 137 petition with its reply. The respondent did not dispute this correspondence, and its own counter said it was STRAT IP that did not file the reply.<\/p>\n
The Court took note of the petitioner’s explanation for the time that passed. The attorneys held the FER from November 2020 but sent instructions only in August 2022, and it took until 3 September 2024 to file the Rule 137 petition after the abandonment was discovered. According to the Court, the petitioner’s side submitted that the first period occurred while it was relying on its agent’s advice, and the delay after 25 November 2022 came after the loss and did not cause it. The Court observed that throughout, the petitioner kept taking steps to pursue the application, and that nothing on record showed it ever gave it up.<\/p>\n
The Court explained that restoration only revives the examination of the application on its merits. It does not grant a patent, and no prejudice to the respondent or to any third party had been shown. Since the Controller has no power to extend the time, sending the matter back to decide the Rule 137 petition, which had remained pending since 3 September 2024 despite reminders, would serve no purpose. The Court was therefore satisfied that this was a fit case for exercise of the writ jurisdiction.<\/p>\n
The Court restored the application to the position it occupied before it was treated as deemed abandoned and condoned the delay in replying to the FER dated 25 November 2020. The respondent must take on record the reply dated 2 September 2024, filed with the Rule 137 petition on 3 September 2024, and show the restored status in its records within four weeks of receiving a copy of the order. The respondent must then examine the application under the Act and the Rules and endeavour to complete the examination within six months. If an adverse order is contemplated, the petitioner must be heard. The Court expressed no opinion on patentability, and there was no order as to costs.<\/p>\n
The following extracts from the order of the Court carry its reasoning on the Controller’s power, the writ court’s power and the final directions.<\/p>\n
\u201cThese time limits are mandatory, and the Controller has no power to extend them. The respondent is therefore right that the time could not be extended by the Patent Office. But it does not follow that this Court is powerless.\u201d<\/p><\/blockquote>\n
\u201cThe mistake of a patent agent is treated like the mistake of an advocate, for which a litigant ought not to suffer, and abandonment, being a conscious act, cannot be presumed.\u201d<\/p><\/blockquote>\n
\u201cAt the same time, since the words of Section 21(1) cannot be ignored, the power is to be used sparingly, and only where the applicant shows from the record that it never gave up the application and that its loss was the result of its agent’s default.\u201d<\/p><\/blockquote>\n
Paragraph 17 on why the matter was not sent back<\/h3>\n
\u201cRestoration only revives the examination of the application on its merits; it does not grant a patent, and no prejudice to the respondent or to any third party has been shown. Since the Controller has no power to extend the time, sending the matter back to decide the Rule 137 petition, which has remained pending since 03.09.2024 despite reminders, would serve no purpose. This Court is therefore satisfied that this is a fit case for exercise of the writ jurisdiction.\u201d<\/p><\/blockquote>\n
Paragraph 18 on the directions<\/h3>\n
\u201cIn the result, the writ petition is allowed, and it is ordered as follows. Indian Patent Application No.201747029902, titled “Firefighter Training Unit”, is restored to the position it occupied before it was treated as deemed abandoned under Section 21(1) of the Patents Act, 1970. The delay in replying to the First Examination Report dated 25.11.2020 is condoned.\u201d<\/p><\/blockquote>\n
Case Citation<\/h2>\n