As patent lawyers, meeting deadlines can be crucial to the success of a patent application. Two of the most important deadlines one needs to be aware of while prosecuting patent applications in India are the deadline for filing a request for examination and the deadline for filing a response to the first examination report.
While it is possible to get a limited extension for filing a response to the first examination report, no extension of time is currently available for filing a request for examination. Missing these deadlines can result in the abandonment of the patent application in India.
However, the Courts in India have recently shown a willingness to allow extensions of time for these deadlines in exceptional circumstances. In the European Union vs. The Controller of Patents & Designs and Bry-Air Prokon Sagl & Ors. vs Union of India & Anr., the courts allowed the filing of a response to the first examination report after the deadline if the applicant did not intend to abandon the application.
Similarly, in Chandra Sekar vs. The Controller of Patents and Designs & Anr., the court allowed the filing of a request for examination after the deadline due to the negligence of the legal counsel.
The Court observed that the “Courts while exercising writ jurisdiction have extended the time for filing a response to the FER in extraordinary situations, where Patent Agents were found to be negligent in prosecuting the Patent Applications, with no contributory negligence of the Applicant and on showing that the Applicant had a positive intent to prosecute. It is equally settled that ‘Abandonment’ requires a conscious act on the part of the applicant, which would manifest the intention to abandon, and no presumptions can be drawn in this respect. It also needs no reiteration that deemed abandonment of the application for grant of patent, leads to serious impact on the valuable rights of the patent applicant
The Court further relied upon the Report of the Parliamentary Standing Committee titled ‘Review of the Intellectual Property Rights Regime in India’. The Court, while condoning the delay in this case had held, ‘…The Committee opines that abandoning patents without allowing a hearing or petition may demoralise and discourage patentees in the country to file patents. It recommends the Department that certain flexibility should be incorporated in the Act to make for allowance of minor errors and lapses to prevent outright rejection of patents being filed. Hence, a revised petition with penalty or fee may be permitted under the Act for minor or bona fide mistakes…’
Overall, it seems that the courts in India are willing to allow extensions of time for these deadlines in exceptional circumstances, such as the negligence of legal counsel or a lack of intent to abandon the application. However, each case would require an examination of its own facts and circumstances to see the intent of the applicant to abandon.
The bigger question that is left in the wake of such judgements is whether all patent applicants suffering due to similar situations would have to approach High Courts to move forward with their application or will the Patent Office mend their ways and take a flexible view of the timelines to allow for exceptional circumstances, a power they have already been bestowed under Rule 137.
Bry-Air Prokon Sagl & Ors. vs Union of India & Anr.
The European Union vs. The Controller of Patents & Designs.
Chandra Sekar vs. The Controller of Patents and Designs & Anr.
#patentdeadlines #patents #requestforexamination #responsetoFER
Raja Selvam
Founder & Managing Attorney, Selvam & Selvam | Practice areas include Trademarks, Patents, Domain names & Business law. Visiting faculty, Department of Journalism, Madras University where I teach copyrights & trademarks law. Passionate about entrepreneurship, start-ups, stocks, farming, technology and law.
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