As patent attorneys, adhering to deadlines is pivotal for the success of a patent application. In India, two critical deadlines to bear in mind while prosecuting patent applications are those for filing a request for examination and responding to the first examination report.

Presently, while a limited extension of 3 months is possible for filing a response to the first examination report, no such extension is available for filing a request for examination. Failure to meet these deadlines can lead to the abandonment of the patent application in India.

However, recent developments indicate that the Indian Courts have displayed a willingness to grant extensions of time for these deadlines in exceptional circumstances. For instance, in the cases of European Union vs. The Controller of Patents & Designs and Bry-Air Prokon Sagl & Ors. vs. Union of India & Anr., the courts permitted the filing of a response to the first examination report after the deadline, given that the applicant had no intention to abandon the application.

Similarly, in the case of Chandra Sekar vs. The Controller of Patents and Designs & Anr., the court allowed the filing of a request for examination after the deadline, on the ground that the negligence on the part of the legal counsel to file the request for examination on time should not result in the abandonment of the legal rights of the Applicant.

The Court’s observation emphasized that extensions of time for filing a response to the first examination report are granted in extraordinary situations, specifically when Patent Agents were found negligent in prosecuting the Patent Applications without any contributory negligence from the Applicant, and it is evident that the Applicant had a genuine intent to prosecute the application. Moreover, the term “Abandonment” requires a conscious act on the part of the applicant, explicitly manifesting the intention to abandon the application. No presumptions can be drawn in this regard. The deemed abandonment of a patent application can severely impact the valuable rights of the patent applicant.

In its decision, the Court also relied on the Report of the Parliamentary Standing Committee titled ‘Review of the Intellectual Property Rights Regime in India’. The Committee recommended that certain flexibility be incorporated into the Act to allow for minor errors and lapses to prevent outright rejection of patent filings. Thus, the Act should permit a revised petition with a penalty or fee for minor or bona fide mistakes.

While the recent rulings indicate that the Indian courts are open to considering extensions of time in exceptional circumstances, such as negligence by legal counsel or the absence of intent to abandon the application, it is essential to analyze the unique facts and circumstances of each case to ascertain the applicant’s true intent.

An important question arises from these judgments: Do all patent applicants facing similar situations need to resort to approaching High Courts to advance their applications? Or will the Patent Office recognize the need to adopt a more flexible approach to timelines, exercising the power already vested in them under Rule 137? The latter could significantly streamline the process and reduce the burden on patent applicants facing exceptional circumstances.

In conclusion, the recent judicial developments offer hope and relief to patent applicants encountering unforeseen difficulties. The decisions signal the Court’s willingness to consider extensions on a case-by-case basis, ensuring that genuine applicants are not unfairly penalized due to circumstances beyond their control. It remains to be seen whether these progressive judgments will prompt the Patent Office to adapt its approach and provide a more accommodating environment for patent applicants in India.