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FACTS OF THE CASE
The petitioner, European Union, represented by the European Commission located in Belgium filed two writ petitions under Article 226 and 227 of the Constitution of India. The petition comprised of patent application bearing no. 11123/DELPN/2012 titled ‘Method of Providing an Authenticable Time-and-Location Indication and an application bearing no. 3466/DELNP/2013 titled ‘Apparatus and method’ respectively. The Indian Patent Office treated both these Applications as ‘deemed to have been abandoned’ under Section 21(1) of the Patents Act, 1970.
The Petitioner had filed PCT Applications for the same and initially engaged a European Law firm to file and prosecute the Indian national phase application under Patent Cooperation Treaty. The First Examination Reports (Hereinafter referred to as FERs) were issued by the Patent Office on 10th April, 2018 for 11123/DELNP/2012 and 29th June 2018 for 3466/DELNP/2013 respectively. However due to non-filing of the Reply to the FER within the stipulated time, both the applications were ‘deemed to have been abandoned’.
The files of these applications were then moved by the Petitioner to Indian firm M/s Remfry & Sagar since there was no response from the first patent agent. The second patent agent filed its reply to the FER on 29th April, 2019. However, no reply was received and thus this writ petitions were filed before the Hon’ble Delhi High Court.
RELIEF SORT BY THE PETITIONER:
The Petitioner in the instant matter had sort for setting aside the deemed abandonment order dated January 21, 2019 issued in Indian Patent Application No. 11123/DELNP/2012 and to issue directions to the Respondents to revive the application and take on record the response filed by the Petitioner to the First Examination Report issued in Indian Patent Application No. 11123/DELNP/2012 and further process and examine the Indian Patent Application No. 3466/DELNP/2013 for patent grant procedure.
The court heard both the sides at length and categorized the decision into four broad headings given below,
- The first category which concerns with decisions relating to delay in filing of international application into the national phase.
- The second category of decisions relates to delay in filing of Request for Examination.
- The third category refers to decision concerning response to FERs.
- And the fourth category concerns regular payment of annuities to FERs.
This Court was of the opinion that the present two applications would fall in the category of exceptional circumstances, owing to the peculiar facts where the response to the FERs deserve to be taken on record. Accordingly, it was directed that the response to the FER shall be taken on record by the patent office. The application nos. 11123/DELNP/2013 and no. 3466/DELNP/2013 shall be restored to their original position. The examination of the said patent shall now be proceeded with by the patent office in accordance with the Act and the Rules. The same shall be concluded within a period of six months.
The Hon’ble Court relied on the decision of Ferid Allani v. Union of India, wherein it was held that the impact of deemed abandonment of an application is deprival of the valuable rights which flow in favor of any invention as are guaranteed under Section 48 of the Patents Act. Such an act of abandonment will deny the applicant his substantive rights to claim exclusive rights for his invention. Thus the question of abandonment is fundamentally a question of intent, though express or implied by action or conduct. Abandonment is never presumed.
The court then applied the judgment in Kailash v. Nanhku along with the full court decision in Hasti Mal Jain Tradind as Oswal Industries v. Registrar of Trade Marks, wherein it was held that the requirement under Rule 24B (4)(1) of the Rules as it then stood was directory and not mandatory in nature.
Further the court placed reliance on the case of Telefonaktiebolaget Ericsson v. Controller of Patents “abandonment” requires a conscious act on the part of the Petitioner which would manifest the intention to abandon the application. Judgment also refers to Section 80 of the Act and Rule 138 of the Patents Rules which gives discretionary powers to the Controller to extend the time for complying with a requirement. When the Petitioner responded to each of the objections set out in the examination report in writing within the time prescribed. It cannot, therefore, be said that it failed to respond to the objections and, therefore, did not comply with the requirements imposed on it under the Act. In other words, the basic factual condition for attracting the deemed fiction of “abandonment” in terms of Section 21(1) of the Act, was non-existent in the instant case. It is pertinent that the intention of the Petitioner not to abandon its application was evident in its response dated 22nd September 2008 where it requested that in the event the Controller was not inclined to grant its patent, it may be afforded an opportunity of being heard. Such an opportunity is clearly envisaged in Section 14 itself. This is further provided for in Section 80 of the Act and Rule 129 of the Patent Rules.
The Hon’ble court also placed reliance on Nokia Corporation v. Deputy Controller of Patents where the national phase application was filed in India on 18th August 2009. The PCT National Phase application was sought priority from the US application dated 11th January, 2007. The delay in this case was in respect of the 31 months period for filing of the application in India under Rule 20(3) of the Rules. The Deputy Controller of Patents held that with respect to an international application, designating India had to be filed with the prescribed fee within the time limit i.e., 31 months from the date of priority as envisaged under Rule 20(4) of the Rules. According to the Dy. Controller of Patents, 31 months’ period had lapsed and applying Rule 22 of the Rules, the application was held to be ‘deemed to be withdrawn’. Condonation of delay had been sought by the Applicant and a hearing was also given. The Court had held that if good cause is shown for delay in submitting the application, one month extension can be granted even if the said application was not moved within the period of 31 months. The observations of the Court are as under: The extension application is required to be made within the period prescribed.
The court held that it is clear that in the prosecution of patent applications, deadlines fixed in the Act read with the Rules fall into two categories:
- Deadlines which can be extended
- Deadlines which cannot be extended.
The patent agents are expected to know of which deadlines are extendable and which are not extendable.
Non extendable deadlines include inter alia –
- Deadlines relating to entry of the application into the national phase,
- Timelines for filing of request for examination,
- Timelines for putting an application in order for grant etc.,
In the instant matter the Court complied with decision that in the case of response to the FER is concerned, in Ferid Allani, Telefonaktiebolaget Erricson and PNB Vesper Life Sciences, High Courts while exercising writ jurisdiction have granted extension in filing of the response to the FER including on the ground that the applicant did not have the intention to abandon. In such extraordinary situations, the Court has exercised its writ jurisdiction to ensure that valuable statutory rights of the Applicant are not completely deprived of.
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 present writ petitions clearly highlight the important role of patent agents in prosecuting patent applications.
Manifestly, the primary objective for enacting patent law is to encourage inventors to make a greater contribution to their field by granting them exclusive rights to their invention. In today’s world, technology is advancing with the blink of an eye thus complying with a systematic timeline for a patent application is extremely crucial. In the instant matter the PCT international application was filed in the year 2011. Due to negligence the process has been delayed for 10 years now. This delay in the application process has tampering effects on our technological advancement.
The court in this case has taken a pro applicant stand and has stated that the Applicant had no intention to abandon the application thereby giving a lenient approach to this writ petition. But the lack of follow-up by the Applicant may lead to an inference that the applicant intended to abandon the patent. Applying the principles of contract of agency, the patent applicant becomes the Principal and the first law firm, his agent. Pursuant to section 212 of the Contract Act, 1872 the agent shall work with reasonable skill and diligence and he shall exercise the skill that a member of that profession will exercise. The first agent has clearly failed to do so. The conduct of the applicant shows that no efforts were put to transfer the documents from the first patent agent to the second one; it is this conduct which suffices the elements of negligence. However the respondents have failed to prove this before the bench. Therefore the court was bound to apply the legal position that the litigants ought not to suffer for the mistake of the litigator and silence of the applicant was merely ignored.
In addition, the court also referred to the 161st report submitted by the Department Related Parliamentary Standing Committee on Commerce titled ‘Review of the Intellectual Property Rights Regime in India’. The Committee was of the opinion that abandoning of patents, without allowing hearing or petition, may discourage and demoralize patentees in the country to file for patents. The Department recommended that certain flexibility should be incorporated in the Act to make for allowance of lapses and minor errors 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 field patents.” Thus in the instant matter the petition was allowed and the deemed abandonment status on the two patent applications was struck down. This precedent is a reminder for the future patent applicants and their attorneys to diligently follow the time line as prescribed under the statute. It is a reminder that delay not only impacts the applicant but also our world’s technological advancement.
Author: Vaishnavi Naik – a student of Ramaiah College of Law, Bangalore, in case of any queries please contact/write back to us via email email@example.com or at Khurana & Khurana, Advocates and IP Attorney.
 W.P(c)-ipd-5-2022 & W.P (c)-IPD-6-2022.
 WP(C) 7 of 2014.
 2005(4) SCC 480.
 83 (2000) DLT 249.
 W.P.(C) 464/2014 & CM Nos.911/2014 & 915/2014).
 W.P No. 2057 of 2010 and M.P.No.1 of 2010.
 Section 212 of The Contract Act, 1872