If Party's Intention Not To Abandon Patent Application, High Court May Exercise Writ Jurisdiction To Extend Time For Filing Response To FER: Delhi HC

The Delhi High Court has observed that the High Court, in exercise of its writ jurisdiction could grant an extension in filing a response to an FER (First Examination Reports), given that the applicant did not have the intention to abandon its patent application.

Justice Pratibha M Singh held that the consequence of a patent being abandoned and the Applicant being deprived of exclusivity for his invention, was quite extreme. Such a consequence should not be imposed on the applicant for no fault of its own.

Briefly, the facts of the case are that two writ petitions were filed by the Petitioner - the European Union, praying to set aside two orders passed by the Controller General of Patents. 

Through these orders, two patent applications filed by the Petitioner were treated as 'deemed to have been abandoned' under Section 21(1) of the Patents Act, 1970 (the Act). The Petitioner filed both the Indian applications through its Indian patent agent, Mr. Guruswamy Nataraj (first patent agent). The Petitioner had engaged M/s GEVERS for the responsibility of processing, prosecution, maintaining and coordination of these applications. 

The First Examination Reports (FER) were issued by the Patent Office in 2018. However, due to non-filing of the Reply to the FER within the stipulated time, both the applications were 'deemed to have been abandoned'. M/s GEVERS wrote several emails to the first patent agent requesting the report and invoice for the examination request that was filed in respect of both the applications. 

Thereafter, several reminders were sent in respect of the status of the applications via emails. However, M/s GEVERS did not get any response from the first patent agent. In view of the fact that the firm did not hear from the first patent agent, the files of these applications were moved by the Petitioner to another Indian firm – M/s REMFRY & SAGAR (second patent agent), in February 2019, which then informed the Petitioner that the patent applications were 'deemed to be abandoned' in view of non-filing of reply to the FER.

The second patent agent after learning of the abandonment of both the applications filed its reply to the FER. Various emails were also addressed to the patent office seeking a hearing, however, since no reply was received, the present Writ Petitions were filed seeking setting aside of the order of abandonment. The Petitions have been filed on the ground that the delay in filing the reply to the FER, was not attributable to the Applicant.

The petitioner have relied upon various judgments to argue that even if the Controller may not have the power under Rule 138 of the Act to condone delay in filing response to FER, 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 application.

Per contra, the counsel on behalf of the Patent office submitted that the deadlines fixed under the Act were strict in nature.

He relied upon the judgments of this Court in Nippon Steel Corporation v. Union of India and Carlos Alberto Perez Lafuente v. Union of India to argue that when there is a delay in filing the request for examination, if the prescribed time period as per the Patent Rules, 2003 (the Rules) has lapsed, the same cannot be extended thereafter.

The timelines provided in the Rules are mandatory and not directive in nature. He submitted that the legislative intent is evident from a plain reading of Rules 137 and 138 of the Rules.

The court found that a perusal of Section 21 of the Act along with Rule 24B of the Rules, showed that the application had to be mandatorily deemed to have been abandoned unless the Applicant had fulfilled all the requirements imposed on him under the Act.

One such requirement that had been set out in Section 21 was steps to be taken in connection with "the application from the date on which the first statement of objections to the application is forwarded to the Applicant by the Controller."

Under Rule 24B (5) & (6) of the Rules, there is an overall deadline as per which the application is to be put in order for grant within six months from the date on which the first statement of objections is issued. This period is extendable by a period of three months, a request for which has to be made within the initial six months period specified in Form-4.

These two deadlines were held to be mandatory in nature. Further, under Rule 138 of the Rules only some of the deadlines were non-extendable. Additionally, an amendment of Rule 138 of the Rules has made further deadlines as being mandatory. Thus, the court found that the legislative intention was of strict adherence to deadlines by the Applicants.

The court opined that–

"A conjoint reading of the above provisions– Section 21 of the Act read along with Rules 24B, 137 and 138 of the Rules, leaves no doubt in the mind of the court that insofar as the powers of the Controller are concerned, they are circumscribed by the said provisions and the Controller does not have the discretion to extend the timelines prescribed in the provisions, especially those timelines, that are specifically excluded in Rule 138 of the Rules."

Regarding the time period for filing of request for examination, the court placed reliance on the judgement of Carlos Alberto Perez Lafuente v. Union of India in which the court categorically held that the time period was mandatory and could not be extended even in the facts of a case where the patent agent was found to be negligent.

However, the Court noted that in the case of response to the FER is concerned, in Ferid Allani v. Union of India, Telefonaktiebolaget Ericsson v. Controller of Patents, and PNB Vesper Life Sciences v. Controller General of Patents, 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.

Thus, the court, before arriving at a conclusion that an Applicant had abandoned its application, due to non-filing of Reply to the FER/first statement of objections, may in rare cases permit the extension of deadline, after examining the factual matrix to see as to whether the Applicant in fact intended to abandon the patent or not.

The court held that in the present case, it was seen that the Applicant had no intention to abandon the application at all. Firstly, after the filing of the patent application in 2012, the request for examination was filed within the time prescribed. Secondly, even when there was a change in the law firm in Europe in 2017 which was coordinating the prosecution of the patent, the Indian patent agent was duly notified of the said fact. The first patent agent had even confirmed the receipt of the said instructions. Thirdly, there were repeated attempts through email to contact the first patent agent and follow up was done on the status of the Petitioner's applications.

Finally, the issuance of FER was not intimated to the Applicant or its European law firm M/s GEVERS. This is because an FER is usually communicated by the patent office only to the patent agent on record, and not to the Applicant.

Under these circumstances, the court held that–

"Clearly, the chronology of the facts and events set out herein above leave no doubt in the mind of the Court that the Applicant was not negligent and was in fact taking all steps within its command to follow up on the prosecution of the patent application. However, for reasons beyond its own control, the consequence of abandonment has now been saddled upon the Applicant."

It was further held that the consequences of patent being abandoned was quite extreme i.e., the Applicant was being deprived of exclusivity for the invention completely. Such a consequence should not be imposed on the applicant for no fault of its own.

"In the opinion of this Court, 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. Insofar as any mistake committed by counsels/advocates are concerned, the settled legal position is that the litigants ought not to suffer"

However, the court also held that the intention of the Legislature in Rule 138 of the Rules or 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 could not be ignored.

"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."

The court also highlighted 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 took note of the prejudice being caused to patent applicants due to `deemed abandonment' provisions. The Committee had opined that the abandoning of patents would de-moralize or discourage patentees in India.

Thus, the present two applications were found to fall in the category of exceptional circumstances and were ordered to be restored to their original position.

Case Title: THE EUROPEAN UNION REPRESENTED BY THE EUROPEAN COMMISSION v. UNION OF INDIA & ORS.

Citation: 2022 LiveLaw (Del) 571

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