November 4, 2022: The Madras High Court allowed the two writ petitions filed by the applicant with respect to two patent applications that were deemed abandoned by the Indian Patent Office on account of delay in filing the Request for Examination. In Chandra Sekar Vs. The Controller of Patents and Designs & Anr. W.P. Nos. 12620 & 12621 of 2017, the writs were filed by the applicant of the two patent applications titled ‘Methods of Manufacturing a Paint Roller and Components Parts Thereof’ which had entered the National Phase in India in November 2011. The present writs were filed to challenge the orders dated May 3, 2016, passed by the Deputy Controller of Patents and Designs, which had dismissed the applications filed by the applicant since the request for examination was not filed within the prescribed timeline of 48 months.

The writs were filed by the applicant who was aggrieved by the services of a local Indian counsel engaged by the applicant’s legal counsel based out of the United States. It was the case of the applicant that even though multiple queries were raised by the US law firm enquiring the local Indian counsel regarding the filing of Form 18 (Request for Examination), the local counsel responded that according to their understanding the prescribed timeline was still a few months away. Their understanding, however, was caused to due a docketing error that reflected their deadline to be at the end of November 2015, while the actual deadline was May 2015. The local Indian counsel on realizing their error filed a petition of condonation of delay in filing Form 18 with the Indian Patent Office on May 22, 2013, after a delay of 22 days. In August 2013, the applicant realised the error of judgment by the local Indian counsel, made changes and engaged the services of another Indian counsel. The new Indian counsel thereafter, on October 4, 2013, filed a detailed petition under Rule 137 read with Rule 138 of the Patents Rules, 2003. The applicant continued to make due efforts on their part and filed a letter dated December 4, 2013, to request the Patent Office to accept Form 18 with the petition of condonation of delay. The Patent Office, however, dismissed the same stating that Rule 137 does not apply to the present case.

The submissions of the applicant before the Madras High Court rested upon the fact that the erstwhile local Indian counsel engaged by them was immensely negligent and had failed to abide by the prescribed timelines, even upon multiple enquiries being raised by the applicant through their US counsel. The applicant further submitted that the Patent Office had failed to appreciate that the Applicant had been willing and intending to pursue the patent applications and therefore prayed before the High Court that the provisions governing the rules of procedure should be construed liberally in the applicant’s favour.

The Patent Office, contrastingly, submitted that the prescribed timelines were essential to the process of granting a patent since the grant of a patent confers exclusive rights upon the applicant and in case an applicant does not comply with the statutory requirements, the rights of others which had been previously restricted due to the pending application would be revived. Therefore, such a flexible interpretation of statutory compliances could prejudice others. Further, they submitted that the applicant, being the inventor, should directly authorise the Indian Counsel instead of relying upon foreign agents and therefore the contention that the delay should be condoned on account of negligence by the Indian Counsel is unacceptable. They further relied upon Rules 137 and 138 and stated that the provisions did not allow for condonation of delay and that since the applicant’s erstwhile counsel had filed the petition after 22 days, the computer system, which has been programmed in light of the provisions, automatically rejected the same.

The court heard the parties and observed that the point of deliberation in the writ petitions was not whether the Applicant was the inventor of the subject patent applications or whether there was any delay in filing Form 18, the only ground to decide upon was whether such sheer negligence on the part of the applicant’s erstwhile Indian counsel could affect the valuable statutory rights of the applicant.

The court in its determination of the above relied upon the decision of the High Court of Delhi in Bry-Air Prokon Sagl Vs. Union of India W.P.(C)-IPD 25/2022, wherein the court had held that, ‘…Courts while exercising writ jurisdictions have extended the time for filing 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 thereafter relied upon the High Court of Delhi’s decision in the European Union represented by the European Commission Vs. Union of India W.P.(C)-IPD 5 of 2022, wherein the court had observed a matter along similar lines and had further relied upon the Report of the Parliamentary Standing Committee titled ‘Review of the Intellectual Property Rights Regime in India’. Justice Pratibha Singh, 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…’

The court, in light of the above-quoted judgments, the Report of the Parliamentary Standing Committee and the submissions of the applicant, held that the delay was caused due to negligence by the erstwhile Indian Counsel and that therefore, such negligence on part of the counsel could not be used to deprive the valuable statutory right of the applicant. The Patent Office was therefore directed to proceed with the examination of the subject patents in accordance with the Patents Act,1970 and the Rules thereunder.

It is rather interesting to note that several cases dealing with this aspect of the law have been adjudicated upon in just the last few months, and yet there are no changes in the way the Patent Office operates. 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.