Missed deadline: Remedy under the Indian Patent Laws

INTRODUCTION

The process to obtain a patent entails multiple stages from the filing of a patent application to the grant of the patent. There are various deadlines associated with each of these stages, such as the date of filing an application for the grant of patent and the date of filing the Request for Examination (RFE). The Indian Patent Office is very stringent for adherence to these deadlines, and failure to meet them may result in the rejection of a patent application. Thus, it is very important for a patent professional or an Applicant to cautiously meet the to avoid any adverse effect on the application. This article covers the consequences and remedies under the Indian patent laws in case any deadline associated with the patent application is missed.

STRINGENT DEADLINES UNDER THE INDIAN PATENT LAW

There are multiple strict deadlines under the purview of the Indian patent law which are non-flexible. Thus, the Applicant(s) are required to comply with such non-flexible deadlines to safeguard their exclusive rights over the invention. According to the Patents Act, 1970, failure to file the complete specification within twelve months from the date of filing the provisional application results in the abandonment of the patent application¹. Further, the request for examination of the patent application is required to be filed within 48 months from the date of first filing or the date of priority, whichever is earlier². If the request for examination is not filed within the prescribed period of 48 months, the patent application is treated as withdrawn by the Indian Patent Office. Furthermore, failure to file the response to First Examination Report (FER) within 6 months or 9 months (upon requesting a three-month extension) results in abandonment of the patent application³.

Further, there are multiple instances where the High courts have denied the request for condonation of delay of the Applicant(s) upon missing the statutory deadlines. In Nippon Steel Corporation v Union of India (2011)⁴, the Applicant missed the deadline associated with the filing of RFE by over eight months resulting in the patent application being deemed to be withdrawn. Accordingly, the Applicant requested the Controller to amend the priority date of the patent application (to a later date) to extend the RFE deadline. However, the Controller denied the Applicant’s request as the RFE was not filed within the prescribed timeline. Accordingly, the Applicant(s) appealed to the Delhi High Court. Further, the Delhi High Court held that ‘merely because there is no time limit prescribed for filing an application for amendment of the priority date, it does not mean that such application can be filed even after a patent application ceases to exist in law. Once an application is deemed to have been withdrawn by an Applicant in terms of Section 11-B (4) of the Act, the CoP cannot entertain an application for amending any portion of such application’.

Furthermore, in case of 5402/DELNP/2011, the Applicant missed the 31 months deadline associated with filing the national phase application due to the non-receipt of the instructing emails owing to the fault of IT systems. Further, the Applicant filed petitions under rule 137 and rule 138 of Patent Rules, 2003 for condoning the delay, obviating the irregularity, and extending the deadlines to complete the procedures of the national phase application. The controller rejected the petition under rule 137 as the provisions are applicable only to amendments. Further, the controller rejected the petition under rule 137 as the Applicant failed to request for an extension within the prescribed time. Further, the matter was decided by the Delhi High Court on an appeal on the order of the Controller. The Delhi High Court relied on Nippon Steel Corporation v Union of India (2011) and declared that the application is to be treated as withdrawn if the deadline associated with the filing of the national phase application is missed. Thus, the Applicant(s) are required to meet the statutory deadlines on time to save the patent application from being deemed to be withdrawn or abandoned.

REMEDY FOR MISSED DEADLINE

The Patents Act, 1970 and Patents Rules, 2003 do not provide any remedy in case any deadline associated with the patent application is missed by the Applicant. Thus, missing such deadlines may result in the rejection of the patent application. Recently, in the case of the European Union Vs Union of India⁵, the court condoned the delay in filing the response to FER owing to the fault patent attorney representing the petitioner. The facts of the case are as below:

Facts of the Case:

The Petitioner i.e., the European Union filed two writ petitions before the IPD of the Delhi High Court to set aside an order passed by the Controller General of Patents. The order stated that two patent applications filed by the Petitioner bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013, have been treated as ‘deemed to have been abandoned’ under Section 21(1) of the Patents Act, 1970. The patent applications were filed by an Indian patent agent (hereinafter, ‘first patent agent’) based on instructions received from a first European Law Firm (hereinafter, ‘first foreign firm’). Further, the Petitioner changed the responsibility of processing, prosecution, maintaining, and coordination of these patent applications from the first foreign firm to a second European Law firm (hereinafter, ‘second foreign firm’).

Further, FERs were issued by the Patent Office for both patent applications. However, the first patent agent failed to respond to the issued FERs within the stipulated time resulting in the abandonment of the patent applications under section 21 of the Patents Act, 1970. The second foreign firm wrote multiple emails to the first patent agent before the abandonment of the patent applications requesting the status of the patent applications. However, the first patent agent did not provide any response to the second foreign firm. Furthermore, the files of both patent applications were moved from the first patent agent to another Indian law firm (hereinafter, ‘second patent agent’). The second patent agent filed the response to FERs after the due date. However, the response to FERs were not processed by the Patent Office. Thus, the present Writ Petitions have been filed by the petitioner to set aside the order of abandonment.

Submission of the Petitioner

1) The Petitioner argues that the delay in filing the response to the FERs is a result of the negligence of the first patent agent. Further, the Petitioner was continuously following up with the first patent agent. However, the first patent agent did not respond to any follow-up of the petitioner. Thus, the delay in filing the responses should be condoned owing to the fault of the first patent agent.

2) The Petitioner also 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 application⁶.

Court’s Observation and Decision

1) There are multiple precedents including Ferid Allani (supra), Telefonaktiebolaget Erricson (supra), and PNB Vesper Life Sciences (supra), in which the High Courts while exercising writ jurisdiction have granted extension in the filing of the response to the FER if the applicant did not have the intention to abandon the patent application. Thus, the Courts exercising writ jurisdiction, may in rare cases grant an extension after examining the factual matrix of the case to see if the Applicant intended to abandon the patent application.

2) The Court highlighted various extraordinary circumstances which can be considered to grant the extension, such as negligence by the patent agent, docketing error, and whether the Applicant has been diligent.

3) The Court observed that the Applicant had no intention of abandoning the patent application as the Applicant filed the request for examination within the stipulated time after the filing of the patent application. The Applicant also intimate the first patent agent about the change of the foreign firm. Furthermore, the Applicant repeatedly followed up with the first patent agent through emails on the status of the patent applications.

4) The Court also observed that the first patent agent failed to intimate the Applicant or the second foreign firm about the issuance of the FERs by the Patent Office. Further, the Applicant acted diligently to hire the second patent agent for processing, prosecution, maintaining, and coordination of the patent applications. The chronology of the facts and events set out herein establishes that the Applicant was not negligent and was taking all steps within its command to follow up on the prosecution of the patent application.

5) The Court states that the mistake of the patent agent would be similar to the mistake of an advocate who may be representing parties in any civil or criminal litigation.

6) The Court held that the present two patent applications belong to the category of exceptional circumstances. Further, the Court directs that the response to the FER shall be taken on record by the Patent Office. The Patent Office is required to proceed with the examination and conclude the same within six months.

CONCLUSION

The statutory deadlines associated with filing and prosecution of the patent application are strict and non-flexible. When such deadlines are missed, the patent application is treated as deemed to be withdrawn or abandoned. However, the missed deadlines could be condoned in special and extraordinary circumstances where it is proved to the Court that the Applicant wanted to continue with the prosecution of the patent application. Further, the Applicant is also required to prove that he/she acted diligently and took active measures to continue with the prosecution of the patent application. The Courts exercising writ jurisdiction may in rare cases permit the continuation of the patent application after examining the factual matrix of the case. However, the Courts may also deny the request for condonation of delay if the deadline associated with the patent application is missed due to negligence, fault, and laziness of the Applicant(s). Further, the request for condonation of delay may also be denied if the factual matrix of the case shows a lack of intention of the Applicant(s) to continue with the patent application.

¹The Patents Act, 1970, s. 9
²Patents Rules, 2003, r. 24B (1)
³Patents Rules, 2003, r. 24B (5) and (6)
⁴W.P. (C) 801 of 2011
⁵W.P.(C)-IPD 5/2022 & 6/2022
⁶ibid