Missed filing a request for examination? court says, condonable under exceptional circumstances.

Facts of the case:

The Petitioner in this case filed two writ petitions challenging the order of the Respondent (herein referred to as Patent Office) dated 03.05.2016 in respect two of the Petitioner’s applications bearing numbers 8846/CHENP/2011 & 8907/CHENP/2011. The patent applications were filed before the Indian patent office on 29.11.2011 and 30.11.2011 respectively as PCT national phase entries.

The petitioner engaged the services of a New York based firm called Greenberg Traurig for filing and prosecution of the national phase applications outside of the US. Greenberg then availed the services of a firm by the name of Evergreen Valley Law Group P.C. to file the national phase application in India. A request for examination (RFE) for 8846/CHENP/2011 was due to be filed on the 29th of April 2013, similarly, in the case of application number 8907/CHENP/2011, a RFE was due on or before the 5th of May 2013. When the petitioner followed up with Evergreen on the due date to file the RFE, Evergreen informed the petitioner that the deadline for filing a Form 18 (RFE) would expire on the 29th and 30th of November 2015, respectively.

In the month of May, 2013 the petitioner learned from Greenberg Traurig that Evergreen had failed to file the request for examination in a timely manner and that Evergreen had taken steps for filing a request/petition for condonation of delay in filing of the request for examination. The petition filed on 22nd May 2013, sought a condonation of delay of 15 days in filing the Form 18. The said request was refused by the patent office on 19th July 2013. The petitioner then decided to file another / supplementary petition seeking condonation of delay disclosing the true and correct reasons for non-filing of Form 18. On 4th October 2013, the petitioner’s new attorney filed a detailed petition under Rule 137 read with Rule 138 explaining the true and correct reasons for delay in filing Form 18.

The petitioner vide letter dated 4th December 2013, requested the patent office to accept the Form 18. It also approached the Madras High Court (W.P.Nos.15081 and 15082 of 2014) seeking relief against the patent office’s rejection of the request for condonation filed earlier. On the 19th of January 2015, the Court ordered the Petitioner to re-submit the application before the patent office with a copy of the Court order. After hearing the Petitioner, the patent office rejected the request under rule 137 stating that provision of Rule 137 was not applicable to the present case.

Aggrieved by this order of the patent office, the Petitioner once again approached the Hon’ble High Court of Madras. In the arguments advanced by the parties, the patent office stated that the delay in filing the RFE could not be condoned under rules 137 and 138 of the Patents Rules, 2003. If the delay were to be condoned, other inventors would be prejudiced.

Court’s Decision

In arriving at it’s final decision, the Court noted that “In the absence of any material to show that the petitioner has intended to abandon his right to pursue the application for examination, the valuable statutory rights of the petitioner cannot be completely deprived of merely because the patent application for examination has not been diligently presented by the agent.”

The court further noted the judgements passed in the case of Bry-Air Prokon Sagl Vs. Union of India [W.P.(C)-IPD 25/2022] and European Union represented by the European Commission Vs. Union of India [W.P.(C)-IPD 5 of 2022] to state that “while the Controller may have no power to extend the deadline within which the application has to be put in order for grant, courts exercising writ jurisdiction, may in rare cases permit the same, 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 also took note of the 161st report submitted by the Department Related Parliamentary Standing Committee on Commerce on 23rd July, 2021, titled ‘Review of the Intellectual Property Rights Regime in India’ which emphasized on the enormous prejudice being caused to patent applicants due to `deemed abandonment’ provisions. The court observed that the Committee had opined that abandoning of patents would de-moralize or discourage patentees in India. In particular, the court took note of the observations of the Committee in relation to the existing inflexibilities under the Indian Patent Act which stifles the number of patents filed. The relevant para of the Committee report reads as follows:

“vi. It was highlighted that the inflexibilities in Patent Act does not leave any room for errors thereby affecting the filing of patents. It was informed that in countries like US any delay in filing of patents could be condoned with an appropriate petition, fees, timely hearing, and disposal. However, in India, once a due date has elapsed for filing request for examination report or a complete specification after a provisional one, there exist no remedy. Hence, as per Section 21(1) of the Patent Act, 1970, an application for a patent shall be deemed to have been abandoned unless the applicant has complied with all the requirements imposed on him by or under this Act within such period as may be prescribed. This inflexibility affects number of patents filed. The Committee opines that the abandoning of patents, without allowing hearing or petition, may demoralize and discourage patentees in the country to file patents. It recommends the Department that certain flexibility should be incorporated in the Act to make for allowance of minor errors and lapses to prevent outright rejection of patents being filed. Hence, a revised petition with penalty or fee may be permitted under the Act for minor or bona fide mistakes that had been committed in the filed patents.” “

In view of the judgments of the Delhi High Court as well as the Report of the Parliamentary Standing Committee, the court held that no delay or fault could be attributed to the petitioner. The delay was mainly caused by the Indian agent who failed to present the application for examination diligently in time. Accordingly, both the applications of the petitioner would fall in the category of exceptional circumstances and therefore the impugned common order dated 3rd May 2016, passed by the Patent Office, refusing to accept the applications for examination are liable to be set aside and accordingly set aside.


While the Courts have time and again indicated that the powers of the Controller under rules 137 and 138 are quite large, it is important to remember that the timelines provided under the Patents Act and Rules are rather quite rigid and inflexible. It is therefore extremely important that Patent Applicants keep a check on the timelines and strictly adhere to these deadlines.

Authored by Gaurav Mishra

Case Citation:  Chandra Sekar v. The Controller of Patents and Designs and Anr., Decided by the High Court of Madras on 4th November 2022, available at https://indiankanoon.org/doc/181331572/, visited on 11th November 2022.

Leave a comment