Rule 22 of Patent Rules validly extinguishes patent rights for non-compliance with statutory deadlines, affirming the necessity of strict adherence to filing timelines.

JUDGMENT

Saurabh Banerjee, J.

1. As per facts, the petitioner after initially filing US Patent application for grant of a patent on 12.10.2012, through its agents in the U.S.A, filed for grant of the same patent vide a Patent Cooperation Treaty [Hereinafter referred to as "PCT"] application before the World Intellectual Property Organization [Hereinafter referred to as "WIPO"] on 14.10.2013 claiming priority therefrom. Thereafter, the petitioner was required to file the National Phase application for the grant of the same patent before the Indian Patent Office [Hereinafter referred to as "IPO"] within thirty-one months from the priority date, i.e., by 12.05.2015, as thereafter it was to be treated as withdrawn in terms of Section 7A of The Patent Act, 1970 [Hereinafter referred to as "Patent Act"] read with Rule 20(3) of The Patent Rules, 2003 [Hereinafter referred to as "Patent Rules"]. However, the petitioner filed the said application before the IPO only after a delay of five months four days after expiry of the aforesaid period (date of actual filing) of thirty-one months, i.e., on 23.10.2015, albeit along with a petition under Rule 137 of Patent Rules and official fees, accompanied by an affidavit explaining the delay from its side. As the aforesaid application of petitioner was filed beyond the statutory period of thirty-one months, no new application number was assigned by the IPO. As per respondents, there was neither any requirement of issuing a new number by the IPO nor there was any requirement of any communication to be sent to the petitioner of the said filing. However, as per petitioner, the respondents intimated the same to it after three years, without according any new number to the filing done by it and without giving any hearing to it, which was itself not permissible. The respondents had issued two communications dated 10.05.2018 and 14.05.2018 in regards to the request of the petitioner for disposal of its petition for reinstatement of patent rights stating therein that no actions in that regard could be taken as there was no requisite application filed by the petitioner in India.

2. It is thereafter that the petitioner has approached this Court vide the present writ petition seeking to declare Rule 22 of Patent Rules as ultra- virus to the provisions of Patent Act and for quashing of the communications dated 10.05.2018 and 14.05.2018 issued by IPO and thence to take the National Phase application of petitioner on record.

3. As per petitioner, Rule 22 of Patent Rules is ultra vires the provisions of Patent Act in as much as after filing an international PCT application under Section 138 of Patent Act designating India, an applicant is required to pay the requisite official fees for the same by indicating its number in Form 1 along with translation of specification, if it is in any other language barring English, however, Rule 22 of Patent Rules prescribes effect of non-compliance of Rule 20 thereof, by extinguishing the rights of an applicant. The same is bad in law as Patent Act itself does not prescribe any consequence for non-compliance of procedural requirements of paying official fee and filing of translation. Further, save and except Rule 22 of Patent Rules, all the instances under which the substantive rights can be extinguished have been provided under Patent Act itself, leaving nothing for the rule making autho