A four-day delay in responding to an examination report should not automatically sink a patent application — the Controller has discretion to condone it, and must actually consider a request to do so. The Madras High Court applied that in a April 2024 ruling.
The facts
- The applicant claimed a system for converting waste into reusable oil, filing on 5 August 2021.
- A request for examination followed on 28 March 2022; the First Examination Report (FER) issued on 15 March 2023, requiring a response within six months — by 15 September 2023.
- The response was filed on 19 September 2023 — four days late — due to a clerical error (the deadline was mis-noted as 15 October). The application was deemed abandoned under Section 21(1) of the Patents Act, 1970.
- The applicant had also filed, on 19 September 2023, an application to condone the delay under Rule 137 of the Patents Rules, 2003, which gives the Controller discretion to condone procedural irregularities, relying on the Delhi High Court’s decision in European Union v. Union of India.
What the court held
Justice Anita Sumanth noted that:
- the delay was only four days;
- the Controller had not considered the pending Rule 137 condonation application;
- courts normally do not interfere with discretionary condonation decisions, limiting themselves to whether the discretion was exercised properly — but here it had not been exercised at all; and
- the patent office’s counsel did not seriously object to condonation.
The court condoned the delay and reinstated the application, directing the Controller to proceed in accordance with law.
Why it matters
- Rule 137 is a genuine safety net. The Controller can condone procedural irregularities, and a minor, explained delay can be excused.
- Condonation requests must be decided. An application that mechanically abandons a matter without considering a pending Rule 137 request is vulnerable.
- Proportionality matters. Courts resist disproportionately severe consequences for trivial, bona fide slips.
That said, do not rely on condonation — the FER deadline is real, and clerical diligence is the first line of defence.
Frequently asked questions
Can a late FER response be condoned in India? Yes. The Madras High Court held the Controller has discretion under Rule 137 to condone a procedural delay, and reinstated an application filed four days late.
What happens if you miss the FER deadline? The application is deemed abandoned under Section 21(1) — but a Rule 137 condonation request can, in a proper case, revive it.
Must the Controller consider a condonation request? Yes. The court faulted the office for abandoning the matter without considering the pending Rule 137 application.
Should I rely on getting a delay condoned? No. Condonation is discretionary; treat the six-month FER deadline as firm and diarise it carefully.
Useful official resources
- The Patents Act, 1970
- IP India patent e-filing portal