A docketing slip by local counsel meant a patent’s request for examination went in late — and the Patent Office treated the application as abandoned. The Madras High Court restored it, holding that an agent’s negligence cannot extinguish an applicant’s valuable statutory rights.
What happened
In Chandra Sekar v. The Controller of Patents and Designs (W.P. Nos. 12620 & 12621 of 2017, decided 4 November 2022), the applicant challenged 2016 orders dismissing two national-phase patent applications (“Methods of Manufacturing a Paint Roller…”) because the request for examination (Form 18) was not filed within the then-48-month window.
The applicant’s US firm had repeatedly asked the local Indian counsel whether Form 18 was due; the local counsel, relying on a docketing error showing a deadline of November 2015 (the real deadline was May 2015), said there was still time. On realising the mistake, the counsel filed a condonation petition after a 22-day delay; the applicant later switched counsel, filed a detailed petition under Rules 137/138 and pressed the Office to accept Form 18. The Patent Office refused, saying Rule 137 didn’t apply.
The arguments
- Applicant: the former local counsel was grossly negligent despite repeated enquiries; the applicant always intended to pursue the patents, so the procedural rules should be read liberally in its favour.
- Patent Office: timelines are essential — a grant confers exclusive rights, and if an applicant doesn’t comply, third-party rights that were held back by the pending application should revive; the inventor should authorise Indian counsel directly rather than route through foreign agents; and Rules 137/138 don’t allow condonation, so the system auto-rejected the late petition.
The ruling
The Court framed the only real question: could sheer negligence by the applicant’s former counsel defeat the applicant’s valuable statutory rights? Drawing on Delhi High Court authority, it answered no:
- Bry-Air Prokon Sagl v. Union of India — courts have extended time to respond in extraordinary situations, and “‘Abandonment’ requires a conscious act on the part of the applicant… and no presumptions can be drawn.”
- European Union v. Union of India — Justice Pratibha Singh, condoning a similar delay, cited the Parliamentary Standing Committee report: “abandoning patents without allowing a hearing or petition may demoralise and discourage patentees,” recommending flexibility for minor errors and lapses.
Holding the delay was caused by counsel’s negligence, the Court directed the Patent Office to examine both applications under the Act and Rules.
The bigger question
Several such cases have surfaced in a short span, yet the Patent Office’s approach hasn’t changed. The open question: must every applicant caught by a similar lapse run to a High Court, or will the Office finally take the flexible view of timelines it already has power to take under Rule 137?
Note: The request-for-examination window has since been reduced to 31 months under the Patents (Amendment) Rules, 2024 — making diligent docketing even more critical.
The takeaways
- Abandonment needs conscious intent — a mere missed deadline caused by counsel’s error isn’t automatic abandonment.
- Courts will step in where negligence, not the applicant, caused the lapse — but it takes a writ petition.
- Docket the RFE carefully — now 31 months under the 2024 Rules; a single calendaring error can cost the application.
- Authorise and supervise Indian counsel directly where possible, to reduce the chain-of-communication risk the Office criticised.
Frequently asked questions
Can an abandoned patent application be restored in India? Yes — courts have restored applications where the delay was caused by counsel’s negligence rather than the applicant’s intent, since abandonment requires a conscious act.
What is the deadline to file a request for examination? Now 31 months from priority/filing under the 2024 Rules (48 months at the time of this case).
Does missing the RFE deadline automatically abandon the application? The Office treats it that way, but courts have held that true abandonment needs conscious intent — negligence by an agent shouldn’t extinguish the applicant’s rights.
What power does the Patent Office have to condone delay? Rule 137 gives the Office discretion to correct irregularities in procedure; the debate is over how flexibly it should use that power.
Useful official resources
- The Patents Act, 1970
- Indian Patent Office — patents