The Petitioner, the European Union filed two writ petitions seeking two of the orders passed by the Controller General of Patents to be set aside. The orders stated that two patent applications shall be treated as “deemed to be abandoned” under Section 21(1) of the Patent Act, 1970 (“Act”). The Petitioner, initially engaged a European law firm who then engaged a patent agent in India to prosecute their Indian Applications. Later in June, 2017 it engaged another European Firm and this change was further communicated to the Indian patent agent who also confirmed having received the information regarding transfer of files.
The Indian Patent Office issued the First Examination Report (FER) for both the patent applications on 10th April and 29th June, 2018, respectively. However, due to non-filing of the Reply to the FER within stipulated time the impugned orders were passed treating both the applications as abandoned. Meanwhile, the new European Firm wrote several e-mails and followed-up with the Patent Agent in India to check the status and received no response. Finally in February, 2019 when Petitioner changed its Patent Agent in India is when it was apprised of the abandonment.
A reply to FER to was filed for both the applications on 29th April, 2019, along with various mails to the patent office seeking a hearing. Since the patent office did not respond about the reply to the FER and email communications, the Petitioner filed these two Writ Petitions, seeking to quash the abandonment orders and to take the response filed on record.
The issues before the Court were –
- Whether inadvertent delay by the Applicant in filing a response to the FER should be condoned?
- Whether the deemed to be abandoned order passed by the Patent Office must be set aside?
- Whether the Patent timelines are strict and fixed in nature?
The following Sections of the Patents Act, 1970 were discussed and/or relied upon in this order:
The following rules of the Patents Rules, 2003 (updated in 2021) were discussed and/or relied upon in this order:
The Petitioner argued that the Controller may not have the power under Rule 138 of the Act to condone delay in filing response to FER. However, while exercising writ jurisdiction under Article 226 and 227 the Court can, in exceptional circumstances, permit the Applicant to rectify the defect and restore the application.
The Respondent argued that a plain reading of R. 137 and 138 of the Rules would clearly show the Legislative intent to keep strict and fixed deadlines for which the timelines would be mandatory and not directive in nature.
The Court stated that a perusal of Section 21 of the Act along with Rule 24B of the Rules showed that the application had to be mandatorily deemed to have been abandoned unless the Applicant fulfilled all the requirements imposed on him under the Act. The Court noted, that, the powers of the Controller are circumscribed by the Patent Law and the Controller does not have the discretion to extend the timelines prescribed in the provisions, especially those timelines that are specifically excluded in Rule 138 of the Rules.
The Court found that, the entire process of Objections & Replies thereto, Further objections & Replies thereto, has to be mandatorily concluded within the maximum time limit of six months + three months maximum, according to Rules 24B(5) and (6). The Court stated that, before arriving at a conclusion that an Applicant has abandoned its application due to non-filing of Reply to the FER/first statement of objections, while the Controller may have no power to extend the deadline within which the application has to be put in order for grant, the courts exercising writ jurisdiction, may in rare cases permit the extension. The extension can be granted 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.
The Court noted that the issue of FER was not intimated to either the Applicant or European Law Firm, it was only communicated to the Patent agent in India who did not communicate or prosecute the same. After considering the unique factual matrix in the instant case the Court was convinced that there was no intention to abandon on behalf of the Petitioner, instead, the Petitioner’s actions indicated that it was actively pursuing the application. Moreover, the judicial opinion in respect of responses to FER or other deadlines seemed to suggest that if the Applicant did not have an intention to abandon and if the Court was 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.
While considering the circumstances in this case to be exceptional, the Delhi High Court directed the Controller General of Patents to consider the response to FER on record and to restore the patent applications to its original position. The Court ordered the Patent Office to proceed with the examination and to conclude the same within six (6) months and disposed of the writ petitions.
“56. It is unclear as to whether the said patent agent in fact informed the Applicant about the issuance of FER on record. The Applicant appears to have been in the dark about the issuance of the FER and subsequently events unfolded which revealed that the first agent may not have acted diligently and a new Patent agent had to be engaged. Until the second patent agent was engaged in February, 2019, the Applicant had no communication of the FER itself or the non-filing of the reply and finally the consequential abandonment. When the second patent agent became aware of the abandonment of the application, steps were taken to file reply to the FER. Clearly, the chronology of the facts and events set out herein above leave no doubt in the mind of the Court that the Applicant was not negligent and was in fact taking all steps within its command to follow up on the prosecution of the patent application. However, for reasons beyond its own control, the consequence of abandonment has now been saddled upon the Applicant.”
“58. The decisions discussed above would show that inadvertent errors or errors of patent agents have been liberally considered by the Court. The consequences of patent being abandoned is quite extreme i.e., the Applicant is deprived of exclusivity for the invention completely. In the opinion of the Court, such a consequence ought not to visit the applicant for no fault of the Applicant. In the facts of these cases, the Applicant had no intention to abandon the application. It has taken all measures possible to prosecute these applications. The Applicant was conscious of the fact that the patent may be maturing for examination and took the initiative to keep in touch with the patent agent from the very inception.”
“60. The Court is convinced that there was no intention to abandon on behalf of the Petitioner, instead, the Petitioner’s actions indicate that they were actively pursuing the application. Moreover, the judicial opinion in respect of responses to FER or other deadlines seems to suggest 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.”
Citation: European Commission vs Union of India, Decided by the High Court of Delhi, on May 31st, 2022 available at https://indiankanoon.org/doc/134994642/, last visited on June 1st, 2022.
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