In a recent ruling dated April 4, 2024, the Madras High Court addressed a significant issue regarding the procedural timelines in patent filings.

The appellant, claimed to have invented a system and method for converting waste materials into reusable oil products. He filed a patent application on August 5, 2021. On March 28, 2022, a request for examination was filed. Subsequently, a First Examination Report (FER) was issued on March 15, 2023, which required a response within six months. The appellant filed his response to the FER on September 19, 2023, four days past the deadline of September 15, 2023. Consequently, the patent application was deemed abandoned under Section 21(1) of the Patents Act, 1970.

The appellant’s counsel argued that the delay of four days was minimal and should not result in the severe consequence of abandoning the application. They pointed out that the delay was due to a clerical error, where the deadline was mistakenly noted as October 15, 2023, instead of September 15, 2023. He referenced Rule 137 of the Patents Rules, 2003, which provides the Controller of Patents the discretion to condone procedural irregularities. The appellant had indeed filed an application on September 19, 2023, seeking condonation of the delay, attributing it to clerical oversight. Reliance is placed on a decision of the Delhi High Court in European Union represented by the European Commission v. Union of India and others [2022 SCC Online Delhi 1793].

Justice Anita Sumanth, presiding over the case, emphasized that the delay was only four days and that the Controller had not considered the application for condonation of delay under Rule 137. The court noted that normally it would not interfere in matters of condonation of delay as it falls under the discretion of the concerned authority. The extent of intervention would be limited to an examination of whether such discretion has been exercised in an appropriate manner. However, given the circumstances, the court considered the minimal nature of the delay, the counsel for the patent office did not, very seriously, object to the condonation of delay. and the discretionary powers vested in the Controller under Rule 137.

The court ordered the delay to be condoned and the patent application to be reinstated. The Controller of Patents was directed to proceed with the matter in accordance with the law.

This ruling underscore the importance of judicial discretion in procedural matters, especially when minor delays occur due to clerical errors. It highlights the balance between adhering to procedural rules and ensuring that such adherence does not lead to disproportionately severe consequences. The reinstatement of the patent application is a testament to the court’s commitment to fairness and justice in the administration of intellectual property rights in India.

Also read:

Restoring Patent Applications: Indian Courts’ Stance on missing of deadlines to request examination or respond to examination reports

Court comes to the rescue of patent applicants – Extensions of deadlines in exceptional circumstances.