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...

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

Padmakshi Sharma

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