Delhi High Court reaches landmark decision on patent examination report deadlines

In a landmark decision relating to patent examination report deadlines, the Delhi High Court held that a missed deadline for responding to a report may be forgiven when it is clear that the applicant had no intention of abandoning the application, and the Indian agent acted in a manner contrary to the applicant’s intent.

In the case at hand, two patent applications filed by the European Union (the applicant) were deemed abandoned under Section 21(1) of the Patents Act (1970) by the Indian Patent Office for not filing a response to the First Examination Reports (FER) within the statutory time period of six months. The European Union, represented by the European Commission, had filed these  applications in India as national phase entries of Patent Cooperation Treaty applications through a patent agent. The patent applications were subsequently examined and FERs were issued by the patent office. However, the patent agent failed to inform the applicant that the FERs had been issued and, therefore, the due date for filing responses.

Consequently, no response was filed and the applications were deemed abandoned. When a status check resulted in the applicant learning of this debacle, they immediately responded because they had never intended to abandon the applications. All counterpart applications filed in other jurisdictions were diligently prosecuted by the applicant and many of them had proceeded to the granting of patents. After finding new counsel, responses to the pending examination reports were filed with the patent office, along with requests to forgive the delay due to exigent circumstances surrounding these cases. However, the patent office did not take any action on the applications, even after multiple reminders. As a next step, owing to the importance of the applications and the inaction of the patent office, the applicants invoked the writ jurisdiction of the Delhi High Court under Article 226 of the Constitution requesting it to reinstate the applications after forgiving the delay that had caused the deadline to be missed.

Two writ petitions were filed in February 2022, challenging the abandonment of the applications under Section 21(1) of the Patents Act. The court delved into the matter in great detail and carved out an exception for cases, including the matters at hand, where inaction can be attributed to the prosecuting agent, not the applicant. While noting that the deadlines provided under the Patents Act are mandatory and that the patent office may not have the power to extend them, the court affirmed its ability to exercise its extraordinary power to forgive a delay that is a result of extenuating circumstances. The court echoed the recommendations of the Parliamentary Standing Committee on Commerce report Review of the Intellectual Property Rights Regime in India (23 July 2021), in noting that a certain flexibility should be incorporated into the Act to allow for minor errors and lapses, to prevent outright rejection of patents being filed.

It specifically noted:

…while the Controller may have no power to extend the deadline within which the application has to be put in order for grant, courts exercising writ jurisdiction, may in rare cases permit the same, after examining the factual matrix to see as to whether the Applicant in fact intended to abandon the patent or not. Any extraordinary circumstances could also be considered by the Court, such as negligence by the patent agent, docketing error and whether the Applicant has been diligent.

In the end, the court restored the patent applications and directed the patent office to continue examination of the cases. However, it clarified that the exercise of its jurisdiction to condone such delays is not a blanket power and would need to be based on the particular facts of each case. It further cautioned that: “lack of follow-up by the applicant would be a circumstance which may lead to an inference that the applicant intended to abandon the patent.”

This decision is a welcome departure from the harsh deadline enforcement in Indian patent practice. The court has carved out a necessary exception when it is clear that an applicant has no intention of abandoning their patent application(s) and an unfavourable result is the result of negligence that is not attributable to the applicant.