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High Court of Delhi extends statutory deadline for filing response to FER in European Union’s patent applications

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In the recent case of The European Union vs. Union of India and Ors., W.P.(C)-IPD 5/2022 and W.P.(C)-IPD 6/2022, the Petitioner (European Union) filed two writ petitions against two orders passed by the Controller General of Patents for deemed abandonment of its patent applications.

By way of background, the Petitioner had initially engaged a European law firm (M/s. Freylinge) which in turn engaged one Mr. Guruswamy Nataraj (“first patent agent”) for filing and prosecuting the patent applications (on their behalf). The first patent agent filed Indian Patent Application No. 11123/DELNP/2012 (on December 21, 2012) and Indian Patent Application No. 3466/DELNP/2013 (on April 18, 2013).

Subsequently, the responsibility for processing, prosecuting, maintaining, and coordinating the applications was moved by the Petitioner to another European firm namely, M/s. Geavers in June 2017. M/s. Geavers informed the first patent agent about the movement of the responsibility of handling the files from M/s. Freylinge to M/s. Geavers, which was duly acknowledged by the first patent agent.

The First Examination Reports (FERs) were issued by the Patent Office in these patent applications on April 10, 2018, and June 29, 2018. However, due to the non-filing of the responses to the FERs within the statutory time frame, the applications were ‘deemed to have been abandoned’ by the Applicant.

It is pertinent to note that prior to abandonment of the patent applications, M/s. Geavers had written multiple e-mails to the first patent agent. However, the first patent agent did not revert with a response. Since there wasn’t any response from the first patent agent, the patent applications were moved from the first patent agent to another Indian law firm ‘M/s. Remfry & Sagar (“second patent agent”). In February 2019, the second patent agent informed the Petitioner that the patent applications have been ordered as ‘deemed to have been abandoned’ by the Petitioner owing to the non-filing of the response to the FERs.

The second patent agent after learning of the orders of deemed abandonment filed the responses to the FERs on April 29, 2019. The second patent agent also addressed multiple e-mails to the patent office seeking a hearing on these files, however, no response was received from their side. The second patent agent (upon instructions from the Petitioner) filed writ petitions before the High Court of Delhi. The primary ground for filing the writ petitions was that the delay in filing the responses to the FERs was not attributable to the Applicant. The Petitioner pleaded that the delay in filing the responses deserves to be condoned as the Petitioner’s valuable rights in the patents have been lost due to the negligence of the first patent agent, which could not have been the fault of the Petitioner.

On the other hand, the counsel on behalf of the Patent Office submitted that the deadlines fixed under the Patent Act are strict in nature. The counsel argued that if the prescribed time period as per the Patent Rules, 2003 has lapsed (including the time frame for filing a response to a FER), the same cannot be extended thereafter. As per the counsel, even though the Controller has general powers to extend, amend and remove any irregularities without detriment to the interest of the Applicant in respect of specific procedures to be undertaken by the Applicant. Rule 138 of the Patent Rules do not give power to the Controller for granting an extension in respect of filing the reply to the FER.

The Court thereafter perused the relevant provisions of the statute, which are (in relevant part) extracted below:

  • Section 21(1) of the Patent Act, 1970“An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act…”

  • Rule 24B of the Patent Rules, 2013“…(5) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements; (6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).”

The Court observed that a reading of Section 21 along with Rule 24B shows that the application has to be mandatorily deemed to have been abandoned unless the Applicant has fulfilled all the requirements imposed on him. It was further observed that the entire process of objections (and replies thereto), further objections (and replies thereto) have to be concluded within the maximum time limit of six months (further extendable by a maximum period of three months).

The Court also analyzed the provision under Rule 138 which provides for the Controller’s power to extend the prescribed timelines under the legislation. The provision (in relevant part) reads as:

Section 138 of the Patents Act, 1970 “(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct; (2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.”

Upon analyzing the aforementioned provision, the Court observed that the legislative intent is of strict adherence to deadlines by the Applicants, wherein the power of the Controller to grant extension is curtailed for a period of one month only and that the power of extension of one month does not extend in respect of the provisions contained in Rule 138 (including the deadline to file a response to a FER).

The Court went on to analyze the judicial precedents on this point and observed that in some judicial precedents, the Courts (while exercising their writ jurisdiction) 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 the Applicant is not denied of its valuable statutory rights.

The Court observed that the extraordinary circumstances could be in the form of negligence by the patent agent, docketing error and whether the Applicant had been diligent in prosecuting the application. The Court did observe that the lack of follow-up by the Applicant could be a circumstance that may lead to the inference that the Applicant intended to abandon the patent application.

The Court finally observed in the present case that in view of the fact that no fault can be attributed to the Applicant, the Applicant ought not to be made to suffer. The Court deemed it fit for such a situation to fall in the category of exceptional circumstances. Accordingly, it is directed that the response to the FER shall be taken on record by the patent office and that the examination of the said patents shall now be proceeded with by the patent office in accordance with the provisions of the statute.

However, the Court did send out a word of caution that “the intention of the legislature in Rule 138 of the Rules cannot be ignored by the Controller, nor can one ignore the express language of Section 21(1) of the Act, which mandates a deemed abandonment in case of non-compliance with the requirements imposed under the Act. It is only in extraordinary cases, while exercising writ jurisdiction, that the Court may consider being flexible, and this would depend on the facts of each case as to whether a condonation ought to be given at all.”

This judgment shows a positive approach of the judiciary in going beyond the apparent rigidness of the statute (in terms of strict non-extendable deadlines) to protect the rights and interests of the IP rights holders. This precedent might not only come in handy for patent rights holders but in cases of lapsed deadlines for other intellectual properties (involving no fault on the part of the Applicant).