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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
The European Union Represented & Ors. - Appellants
Versus
Union Of India & Ors. - Respondents
W.P.(C)-IPD 5 of 2022 and W.P.(C)-IPD 6 of 2022
Decided On : 31-05-2022
PATENT - ABANDONMENT - DEEMED ABANDONMENT - DELAY IN FILING RESPONSE TO FIRST EXAMINATION REPORT (FER) - POWER OF CONTROLLER TO EXTEND TIME - INTERPRETATION OF SECTION 21 OF THE PATENTS ACT, 1970 AND RULE 24B OF THE PATENTS RULES, 2003 - JUDICIAL DISCRETION IN EXERCISING WRIT JURISDICTION - INTENTION TO ABANDON - MISTAKE OF PATENT AGENT - APPLICANT'S DILIGENCE - JUDICIAL APPROACH - PARLIAMENTARY STANDING COMMITTEE'S REPORT ON REVIEW OF INTELLECTUAL PROPERTY RIGHTS REGIME IN INDIA - RESTORATION OF PATENT APPLICATIONS.
Fact of the Case:
The Petitioner, the European Union, represented by the European Commission, filed two writ petitions challenging the orders dated 21st January, 2019 and 30th September, 2019, passed by the Controller General of Patents, treating two patent applications bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013 as 'deemed to have been abandoned' under Section 21(1) of the Patents Act, 1970 (the Act). The Petitioner sought to set aside the orders and restore the applications.
Finding of the Court:
The Court held that the deadlines fixed in the Act read with the Rules fall into two categories: (i) deadlines which can be extended, and (ii) deadlines which cannot be extended. The Court further held that the provisions of the Act and the Rules are abundantly clear as to which deadlines can be extended and which cannot be extended. The Court also held that in the prosecution of patent applications, patent agents are expected to know of which deadlines are extendable and which are not extendable.
Issues: 1. Whether the Controller has the power to extend the time for filing a response to the FER under Section 21 of the Act and Rule 24B of the Rules? 2. Whether the Court can exercise its writ jurisdiction to condone the delay in filing the response to the FER and restore the patent applications? 3. Whether the Applicant had the intention to abandon the patent applications?
Ratio Decidendi: 1. The Court held that the Controller does not have the power to extend the time for filing a response to the FER under Section 21 of the Act and Rule 24B of the Rules. The Court interpreted Section 21(1) of the Act and Rule 24B of the Rules to conclude that the deadline for putting the application in order for grant is mandatory and cannot be extended. 2. The Court held that it can exercise its writ jurisdiction to condone the delay in filing the response to the FER and restore the patent applications in exceptional circumstances. The Court considered the following factors in exercising its discretion: (i) the Applicant's intention to abandon the patent applications, (ii) the mistake of the patent agent, and (iii) the Applicant's diligence. 3. The Court held that the Applicant did not have the intention to abandon the patent applications. The Court considered the following factors in reaching this conclusion: (i) the Applicant had filed the applications in several foreign countries, (ii) the Applicant had entered India within the prescribed period, (iii) the Applicant had obtained the grant of patents for corresponding applications in several foreign countries, (iv) the Applicant had filed the request for examination within the prescribed period, and (v) the Applicant had followed up continuously with the patent agent as to the status of the applications.
Final Decision: The Court allowed the writ petitions, set aside the orders of the Controller General of Patents, and restored the patent applications. The Court directed the patent office to take the response to the FER on record and proceed with the examination of the patent applications in accordance with the Act and the Rules within a period of six months.
ORDER
Prathiba M. Singh, J. (Oral). - This hearing has been done through hybrid mode.
2. These two writ petitions, W.P.(C)-IPD-5-2022 & W.P.(C)-IPD-6-2022 have been filed by the Petitioner- the European Union, represented by the European Commission located at Brussels, Belgium. The Petitioner is seeking setting aside of orders dated 21st January, 2019 and 30th September, 2019, passed by the Controller General of Patents. Vide the said orders, two patent applications bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013, filed by the Petitioner have been treated as 'deemed to have been abandoned' under Section 21(1) of the Patents Act, 1970 (hereinafter, 'the Act ').
Brief Chronology of events in W.P.(C)-IPD-5-2022
3. The Petitioner filed Indian application no. 11123/DELNP/2012 on 21st December, 2012 through its Indian patent agent, Mr. Guruswamy Nataraj (hereinafter, ' first patent agent '). The said application was titled 'Method of Providing an Authenticate Time-and-Location Indication ', the bibliographic details of which are set out below:
Priority Application No. | EP 10166025.6 |
Earliest Priority Date | 15/06/2010 |
PCT International Application No. | PCT/EP2011/058989 |
PCT International Filing Date | 31/05/2011 |
Indian Patent Application No. | 11123/DELNP/2012 |
Indian Filing Date | 21/12/2012 |
Request for Examination Filed | 7/10/2013 |
FER issued | 10/4/2018 |
Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
Date of order holding the application 'deemed to be abandoned' | 21/1/2019 |
Date of engaging fresh attorneys | February, 2019 |
Date of filing of Reply to the FER along with a representation seeking hearing in the application | 29/4/2019 |
Term of the Patent if granted | 30/5/2031 |
Brief Chronology of events in W.P.(C)-IPD-6-2022
4. The Petitioner filed application no. 3466/DELNP/2013 on 18th April, 2013 through the same patent agent mentioned above. The said application was titled ' Apparatus and Method', the bibliographic details of which are set out below:
Priority Application No. | GB 1016079.4 |
Earliest Priority Date | 24/09/2010 |
PCT International Application No. | PCT/EP2011/066478 |
PCT International Filing Date | 22/09/2011 |
Indian Patent Application No. | 3466/DELNP/2013 |
Indian Filing Date | 18/04/2013 |
Request for Examination Filed | 7/10/2013 |
FER Issued | 29/6/2018 |
Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 18/10/2018, 21/09/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
Date of order holding the application as 'deemed to be abandoned' | 30/9/2019 |
Date of engaging fresh attorneys | March, 2019 |
Date of filing of Reply to the FER | 29/4/2019 |
Term of the Patent if granted | 21/9/2031 |
5. The Petitioner, through the initially engaged European Law Firm, M/s FREYLINGE had engaged the first patent agent to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (hereinafter, 'PCT') applications before the Indian patent office.
6. Thereafter, the responsibility of processing, prosecution, maintaining and coordination of these applications were moved by the Petitioner to another European firm namely, M/s GEVERS in June 2017. Emails were exchanged between the first patent agent and M/s GEAVERS informing the patent agent of the movement of the files from M/s. FREYLINGE to M/s.GEVERS. The first patent agent had duly confirmed the receipt of instructions to the effect that the file has been transferred.
7. The First Examination Reports (hereinafter 'FER') were issued by the Patent Office on 10th April, 2018 for 11123/DELNP/2012 and on 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'.
8. Even prior to the abandonment of the applications, M/s GEVERS wrote several emails to the first patent agent. From January, 2018 onwards M/s GEVERS was in comm
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Point of law : Delay which has occurred at two (2) stages as noticed hereinabove, has not been explained and there is no cause muchless sufficient cause if shown.
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