The court ruled that a patent application cannot be treated as withdrawn if the applicant intended to pursue it, despite delays in response from the Patent Office.

ORDER :

Senthilkumar Ramamoorthy, J.

By this writ petition, the petitioner assails order dated 21.12.2023 rejecting Patent Application No.3022/CHENP/2011 as withdrawn under Section 11-B (4) of the Patents Act, 1970 (the Patents Act).

2. The petitioner filed PCT application bearing No.PCT/EP/09/007174 claiming priority from 09.10.2008. The above mentioned Indian patent application was the national phase application derived from the PCT application. Such application was filed on 03.05.2011, and did not specify a priority date. On 12.09.2013, the petitioner, through its agent, made a request for examination. The said request for examination did not elicit a reply. After several years, on 26.09.2022, the petitioner informed the respondent that the request for examination was not responded to and that the First Examination Report (FER) was not received by the petitioner. The respondent was, therefore, requested to issue the FER. In response, by e-mail of 17.08.2022, the respondent stated that the e-mail has been forwarded to the examination unit (Examiner and Controller). Eventually, impugned order dated 21.12.2023 was issued holding that the patent application was treated as withdrawn.

3. Learned counsel for the petitioner referred to the above sequence of dates and events. He submits that the request for examination is within the 48 month period, if reckoned from the date of filing the national phase application. If reckoned from the priority date specified in the PCT application, he submits that the request is beyond the 48 month limit prescribed in Rule 24B of the Patents Rules, 2003. By referring to a judgment of this Court in Chandra Sekar v. The Controller of Patents and Designs and another, Order dated 04.11.2022 in W.P.Nos.12620 and 12621 of 2017 (Chandra Sekar), learned counsel submits that in substantially similar facts and circumstances, this Court concluded that the patent application cannot be treated as withdrawn. Learned counsel places reliance on paragraphs 14, 17 and 18 of the said judgment. He also relies on the judgment of this Court in France Telecom v. Union of India and  others, Order dated 30.10.2024 in W.P.No.4958 of 2012 (France Telecom), where the judgment in Chandra Sekar was followed.

4. In reply, learned counsel for the respondents submits that Section 11-B(4) prescribes that the application for grant of patent shall be treated as withdrawn by such applicant, if the applicant does not make a request for examination within the period prescribed under the Rules. By referring to Rule 24B, she submits that the prescribed period is 48 months from the priority date of the application or from the date of filing of the application, whichever is earlier. In this case, the priority date being 09.10.2008, she submits that the request for examination dated 12.09.2013 is beyond the prescribed period of 48 months from the priority date. Consequently, it is submitted that no interference is warranted.

5. Section 11-B of the Patents Act is as under:

“11-B. Request for examination.— (1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.

(2) Omitted by the Patents (Amendment) Act, 2005

(3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person.

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant:

Provided that—

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the