Role of ‘Intent’ in Reviving lost Patents and Patent Applications in India

One of the critical parts of a patent attorney’s work is the management of timelines and deadlines relating to patent files being handled by her/him. On average, each patent file in India has at least ten (10) deadlines, and if a patent attorney has a portfolio of 100 patents, she/he is looking at at least 1000 dates to track. Close to 70 percent of these deadlines are non-extendable, and if a patent attorney misses them, the patent is lost as deemed withdrawn, abandoned, or lapsed. Whether the patent applicant had the intent to forego these patent files was irrelevant, and irrespective of the reasons that led to missing the timelines, patents/applications were lost. However, that position of law has now changed to some extent through a recent decision of the Delhi High Court.

Intent to Forego a Patent

In BRY-AIR PROKON SAGL & ORS. Vs. UoI and Ors., the Delhi High Court stated that a patent or patent application cannot be deemed to be withdrawn, abandoned, or lapsed, if no intent to forego the patent/application has been expressed by the patent owner/applicant. Though extending a non-extendable deadline is permitted only in extraordinary circumstances, a lack of intent to forgo a patent/application can give rise to such circumstances. The burden is however on the patent applicant/patentee to prove that an intent to pursue a patent application or keep a patent alive existed. Along with lack of intent, it is important to prove that there was no contributory negligence on behalf of the patentee/patent applicant. While negligence on behalf of the patent agent can be a valid ground, the patent applicant must prove that there was no contributory negligence on its behalf.

When may Patent Deadlines be extended?

In the case, the Court acknowledged that extension of the following patent deadlines is permitted when there was no intent  to forego:

  1. Extension of time to file FER response after the  deadline;
  2. Restoration of lapsed patents after the timeline has passed; and
  3. Filing of national phase application after the 31-month period has passed.

Though the Court discussed only the aforementioned aspects, the ratio of the judgment can be extended to other circumstances as well.

What about technical/clerical errors of the Patent Office?

Patent attorneys often encounter errors on behalf of the patent office, which may result in the loss of patents/patent applications. The errors may include:

  1. Technical errors  of the patent office’s website/filing system because of which applications/documents cannot be filed;
  2. Errors in the processing of payments made to the patent office online;
  3. Clerical errors in filing/docketing by the patent office;
  4. Issues with online hearing facilities/systems; and
  5. Erroneous delivery of communications.

Normally, when these errors are brought to the attention of the responsible Controller or technical person, the patent office rectifies them. However, sometimes, patents/applications may be lost for no fault of the patentee/applicant. Under such circumstances, patent files can be restored, and deadlines extended as there was no intent on behalf of the patentee/patent applicant. It is however important that patent attorneys acquire and maintain evidence of such errors to smoothly revive their clients’ files.

Relevant Paras

Relevant paras from the case in question are reproduced hereunder for easy reference:

” 19. From a reading of the aforementioned judgments, the position of law that emerges is that Courts while exercising writ jurisdiction have extended the time for filing response to the FER in extraordinary situations, where Patent Agents were found to be negligent in prosecuting the Patent Applications, with no contributory negligence of the Applicant and on showing that the Applicant had a positive intent to prosecute. It is equally settled that ‘Abandonment’ requires a conscious act on the part of the applicant, which would manifest the intention to abandon and no presumptions can be drawn in this respect. It also needs no reiteration that deemed abandonment of the application for grant of patent, leads to serious impact on the valuable rights of the patent applicant, which flow in favour of an invention and this is compounded by the fact that under the statutory scheme, no appeal is provided against an order of deemed abandonment of the application for patent under Section 21 of the Act. Therefore, each case would require examination on its own facts and circumstances to see the intent of the applicant to abandon.”

“23. It is a settled position of law that errors/negligence on part of the patent agent without any contributory negligence on the part of the Applicant, has been liberally considered by the Courts, as the consequences of a patent application being abandoned or the lapsing of a patent due to non-deposit of renewal fee are very serious, where the applicant loses his right of claiming exclusivity to an invention.

24. A caveat may, however, be added that the Court must exercise the writ jurisdiction only in extraordinary circumstances. In European Union Represented by the European Commission (Supra), the Court has rightly cautioned that the intention of the Legislature in Rule 138 of the Rules as well as the mandate in Section 21(1) of the Act cannot be ignored and failure to adhere to the timelines must be visited with serious consequences.

In the facts and circumstances of the present case, this Court is of the view that there is no fault or negligence on the part of the Petitioners and therefore, they should not suffer for the fault or negligence of the Patent Agent, and the present case fits into the exception of ‘extraordinary circumstances’. Petitioners are thus entitled to file a response to the FERs with respect to the six patent applications so that they can be processed further.”

“26. Relevant would it be to note that In European Union Represented by the European Commission (Supra), patent applications were restored by the Court on account of the negligence of the Agent which coincidentally happens to be the same agent as in this Court and as rightly pointed by the Petitioners in the said case albeit in the case of the patent applications, the writ petition was allowed extending periods of 40 months and 38 months respectively, in respect of two patent applications. In PNB Vesper Life Science Pvt. Ltd., Represented by its Director Mr. P.N. Balaram v. Controller General of Patents, Designs & Trademarks, 2022 SCC OnLine Mad 3190, it was held that if there is nothing on record which indicates that Petitioner has willfully neglected, benefit of doubt must be given and this is an embodiment of a fact which cannot be gleaned over that valuable rights vest in a patentee on grant of a patent and therefore, if the Applicant is not at fault, he should not be deprived of his rights to enjoy the fruits of his skill, hard work and labour.”


Case Citation: BRY-AIR PROKON SAGL & ORS. Vs. Union of India and Others, 2022/DHC/004439.

Leave a comment