$~27 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 07^th March, 2025 + W.P.(C)-IPD 15/2025 & CM 49-51/2025 CIENA CORPORATION .....Petitioner Through: Mr. Samar Bansal, Mr. K. Rigved Prasad, Mr. Aman Bajaj, Mr.Kaustubh Chaturvedi and Mr. Vedant Kapur, Advocates versus UNION OF INDIA & ORS. .....Respondents Through: Mr. Gaurav Barathi, SPC with Ms. Mamta Tiwari, G.P. with Ms. Rasya Rawal, Advocate for UOI & CGPDT, R-1 & R-2 CORAM:

HON'BLE MR. JUSTICE AMIT BANSAL AMIT BANSAL, J. (Oral)

1. This writ petition has been filed seeking setting aside of the letter dated 16^th February, 2024, passed by respondent No.2 in the PCT National Phase Application No.202017034476, whereby, the patent application filed on behalf of the petitioner has been deemed to be abandoned (hereinafter “Abandonment Letter”).

2. In view of the limited issue involved in the present petition, with the consent of the parties, the petition is taken up for disposal at this stage itself.

Signature Not Verified Digitally Signed W.P.(C)-IPD15/2025 Page1of7

3. Brief facts necessary for deciding the present petition are set out below:-

i. The present Indian patent application pertains to ‘Modular Network Element Architecture’, a new type of modular network element invented by the employees of the petitioner in the year 2018. The invention is a physical hardware having networking, computing and storage functions, and is in the nature of a hybrid between a rack-

mounted module and a line module which is inserted in a chassis.

ii. On 23^rd April, 2018, the petitioner filed the priority Patent Applications bearing no.15/959,746, 15/959,820 and 15/959/869 in the United States Patent and Trademark Office (USPTO).

iii. On 9^th April, 2019, petitioner filed the international application no.PCT/US2019/026489 before the World Intellectual Property Organisation (WIPO) seeking international publication of the invention under the Patent Cooperation Treaty (PCT), after which WIPO published the invention on 31^st October, 2019.

iv. The national phase application in respect of said invention was filed on 11^th August, 2020 by the petitioner before the Indian Patent Office, New Delhi.

v. On 15^th April, 2022, relevant forms prescribed under Indian Patent Rules, 2003 were filed by the Indian Patent Agent of the petitioner requesting for examination of the subject patent application and also seeking amendment of the patent application.

vi. On 1^st September, 2022, the first examination report (FER) was issued by the patent office to the patent agent of the petitioner. However, the patent agent of the petitioner did not inform the Signature Not Verified Digitally Signed W.P.(C)-IPD15/2025 Page2of7 petitioner about the said request for examination of the FER and hence, the reply to the aforesaid FER could not be filed by the petitioner.

4. On 16^th February, 2024, the Abandonment Letter was passed by the respondent no.2 treating the patent application filed on behalf of the petitioner to be abandoned in view of the fact that the petitioner failed to file a response to the FER within the prescribed statutory time period. The relevant extracts from the Abandonment Letter are set out below:-

“I am to invite a reference to the above mentioned Application, In this regard it has been observed from the records available withthis office that you have not submitted the reply to First Examination Report (FER) issued by this Office vide letter No - 202017034476, Dated - 01 Sep 2022.You have failed to put the above mentioned application in order for grant within the prescribed period as stipulated in Section 21(1) of The Patents Act 1970 which expired on 01 Mar 2023.In view of the above circumstances, the said application is treated as deemed to have been abandonedunder theprovisions of section21(1)of thesaidAct.”

5. It is stated that the petitioner came to know about the Abandonment Letter being passed only on 23^rd January, 2025, when the petitioner carried out due diligence through a third party.

6. Immediate