Extension of deadlines – Indian IP Office

Since the inception of the COVID-19 pandemic, every agency and institution of the Government have been putting their best foot forward with endurance. Be it for the citizens, people or its own working professionals, they have worked towards the safety and health of the people of the land.

The Supreme Court of India had taken suo motu cognizance and rendered a laudable order on March 23, 2020, by extending the period of limitation in all matters, irrespective of the genre of laws.

‘……..it is hereby ordered that a period of limitation in all such proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not shall stand extended w.e.f. 15th March 2020 till further order/s to be passed by this Court in present proceedings.’

It held that a period of limitation in all proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not shall stand extended with effect from March 15, 2020, until further order(s) are passed in the proceeding.

Delivering a laudable order, the Apex Court of the country had taken suo motu cognizance of the COVID-19 pandemic and ensured that litigants and counsels are not penalized for the work of the tiny RNA.

Subsequently, the Supreme Court vide order dated March 8, 2021, ended the suspension of deadlines for a brief period. However, due to the sudden deterioration in the COVID situation in India at the end of March, the Court vide order dated April 27, 2021 restored the order dated March 23, 2020 thereby suspending the deadlines once again.

Considering the COVID situation was improving in India, the Supreme Court passed an order passed on September 23, 2021 ending the suo motu extension of limitation period with effect from October 2, 2021. Accordingly, in computing the period of limitation for any suit, appeal, application or proceeding, the period from 15.03.2020 till 02.10.2021 stood excluded. Consequently, the balance period of limitation remaining as on 15.03.2021, if any, was made available with effect from 03.10.2021. Further, in cases where the limitation would have expired during the period between 15.03.2020 till 02.10.2021, notwithstanding the actual balance period of limitation remaining, a limitation period of 90 days from 03.10.2021,i.e.,till January 1, 2022 was made available and in the event the actual balance period of limitation remaining, with effect from 03.10.2021, was greater than 90 days, that longer period applied.

Update: Once again, on January 10, 2022, the Hon’ble Apex Court, in view of the third wave and increasing cases in India,  suspended all deadlines, until February 28, 2022, thereby restoring the order dated March 23, 2020.

Vide this January 10, 2022 order, the following directions are passed:

  1. In computing the period of limitation for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi­ judicial proceedings, the period from 15.03.2020 till 28.02.2022 shall stand excluded. Consequently, the balance period of limitation remaining as on 03.10.2021, if any, shall become available with effect from 01.03.2022.
  2. In cases where the limitation would have expired during the period between 15.03.2020 till 28.02.2022, notwithstanding the actual balance period of limitation remaining, all persons shall have a limitation period of 90 days from 01.03.2022, i.e., till May 30, 2022. In the event the actual balance period of limitation remaining, with effect from 03.10.2021, is greater than 90 days, that longer period shall apply.
  3. The period from 15.03.2020 till 28.02.2022 shall also stand excluded in computing the periods prescribed under Sections 23 (4) and 29A of the Arbitration and Conciliation Act, 1996, Section 12A of the Commercial Courts Act, 2015 and provisos (b) and (c) of Section 138 of the Negotiable Instruments Act, 1881 and any other laws, which prescribe period(s) of limitation for instituting proceedings, outer limits (within which the court or tribunal can condone delay) and termination of proceedings.

Supremacy of the Supreme Court

Exercising its powers under Article 142 read with Article 141 of the Constitution of India, the Hon’ble Apex Court made it clear that, the said order is binding within the meaning of Article 141 on all Courts/Tribunals and authorities. While the Supreme Court took a step forward during this COVID panic, the other organs of the government too played their role.

Influence of COVID-19 on the IP Practice in India – Extension of deadlines

The parts played by the Indian Trademarks Office and the Delhi High Court, are mentionable at this juncture, whose decisions have influenced the IP practice in India, more than that of the coronavirus itself.

The time line of events leading to the decisions can be summarized as below:

Date Particulars
March 23, 2020 Order of the SC announcing an indefinite extension on deadlines from March 15, 2020
March 25, 2020 The first lockdown announced in India until April 14, 2020
April 14, 2020 Lockdown extended to May 3, 2020, with conditional relaxations until April 20, 2020
April 15, 2020 The Indian Trademarks and Patent Office announced that their offices would remain closed for an extended period until May 3, 2020. All the hearings scheduled up to May 3, 2020, also stand adjourned with fresh hearing dates to be notified thereafter.
May 1, 2020 Lockdown further extended to May 17, 2020
May 4, 2020 The Indian Trademarks and Patent Office announced that all the due dates, with respect to timelines/periods prescribed under the IP Acts and Rules, falling due between May 2, 2020, and May 17, 2020, shall be extended to May 18, 2020.
May 11, 2020 Order of Delhi High Court suspending public notice of the Indian Trademarks and Patent Office dated May 4, 2020.
May 17, 2020 Lockdown in India extended once again until May 31, 2020
May 18, 2020 The Indian Trademarks and Patent Office announced that all the due dates, with respect to timelines/periods prescribed under the Trademarks, Copyrights, Designs and Patent Acts and Rules, falling due between March 15, 2020, and May 17, 2020, shall be extended to June 1, 2020.
May 21, 2020 Order of Delhi High Court suspending public notices dated May 18, 2020, and May 20, 2020, by the Indian Trademarks and Patent Office.
June 17, 2020 Order of Delhi High Court reaffirming the operation of the May 21, 2020 order and directing the Indian Patent & Trademark Office to do the needful immediately. The Indian Trademarks and Patent Office informed the Court that they have complied with the Court order.
March 8, 2021 Order of Supreme Court directing that deadlines falling between March 15, 2020 and March 14, 2021, would automatically be extended to June 13, 2021. Deadlines falling after March 14, 2021, would resume as usual.
April 27, 2021 Order of the Supreme Court restoring the order dated March 23, 2020, and suspending deadlines until further notice.
September 23, 2021 Order of the Supreme Court directing that deadlines falling between March 15, 2020 and October 2, 2021, would automatically be extended to January 1, 2022. Deadlines falling after October 2, 2021, would resume as usual.
January 10, 2022 Order of the Supreme Court restoring the order dated March 23, 2020 and suspending deadlines until February 28, 2022.
January 18, 2022 Official notification issued by the Office of CGPDTM, Mumbai suspending deadlines until February 28, 2022

Current Practice at the Indian Trademarks and Patent Office

The Indian Trademarks and Patent Office have, at last, have complied to the order of the Delhi High Court and have extended the deadlines in respect of IP matters in India indefinitely. Subsequently, to this undertaking the Indian Trademarks and Patents Office and the Copyright Office have issued public notices [patents, designs & trademark and Copyrights office] dated June 19, 2020 which confirms that the deadlines have been extended indefinitely.

This is also evidenced in the online e-filing system of the copyright, trademark and patent offices. While the coronavirus has impaired physical movement, it has not (at least until now) not entered the digital space and so, there has been smooth functioning of the online e-filing system which has enabled users to move their work on the digital platform.

Initially, where the online filing system of both Offices would lock upon expiry of the deadline and the user would not be able to upload the response, documents, etc. whatever the case may be, has now been released. These deadline locks have been removed and users can file their responses, documents, etc. through the online system. This has not only eased the physical stress of counsels but has also reduced their mental tension. Nevertheless, for peaceful work, it is always advisable that all the submissions are made within the deadline because it is always better to be on time than being sorry at a later date. Planning of work is still the recommended practice.

Furthermore, though the IP Offices are working with skeletal staff they are strictly following the rules of social distancing and therefore, the Offices are inaccessible to the general public and all services of the IP Offices have to be availed online through the e-filing system and email in specific cases.

Deadlines at the IP offices in the Indian Sub-Continent

While we have been busy dealing with this unfriendly and dangerous virus, our neighbours too, have been equally occupied dealing with it in their own way. However, IP practice has been affected there as well and measures are being taken to provide the best service with minimal difficulty. Details about the extension of deadlines, in the countries of Pakistan, Sri Lanka, Nepal, Bangladesh & the Maldives are available here. Each country has taken its own measure and is delivering the best it can.