The Indian patent system works on several deadlines throughout the patent prosecution cycle. While some of the deadlines are extendible, there is no flexibility in others, and as a result, missing them can result in the abandonment of the patent application. Thus, compliance with the statutory deadlines is critical to safeguard exclusive rights over the Invention or the technology. Significantly, failure to comply with the following non-extendible deadlines can cause abandonment of the patent application:

• Filing of complete specifications within twelve months of the provisional application
• Filing of response to the Examination Report within six months (with a further three months extension) of the Exam report
• Filing Request for Examination within 48 months from the priority date
• Non-filing of renewal fees within three months of the grant of patent and consequently each year

At times, the non-compliance of the statutory deadlines is not intentional but erroneous. There could be several reasons, including communication errors between the Applicant and its agent. This issue has been addressed by the Delhi High Court recently in one of the writ petitions filed by the European Union against the Union of India (i.e. The Government of India, whose legal name is “Union of India” as per Article 300 of the Indian constitution) under Article 226 and 227.

Facts:

• The Petitioner filed Indian application no. 11123/DELNP/2012 on 21st December 2012 and 3466/DELNP/2013 on 18th April 2013. The Petitioner, through a European Law Firm, had engaged an Indian patent agent to file and prosecute the Indian national phase applications of their PCT applications before the Indian patent office.
• After that, the responsibility of processing, prosecuting, maintaining, and coordinating these applications was transferred by the Petitioner to another European firm, while the Indian Patent Agent remained the same during this transfer.
• The Patent Office issued the First Examination Reports (‘FER’) on 10th April 2018 for 11123/DELNP/2012 and on 29th June 2018 for 3466/DELNP/2013, respectively. However, due to non-filing of the Reply to the FER within the stipulated time, both the applications were ‘deemed to have been abandoned’.
• The newly appointed European Law firm wrote several unanswered emails to the Indian patent agent. The European Law firm thus transferred the matter to another Indian firm (second patent agent) which then informed the Petitioner that the patent applications were ‘deemed to be abandoned because of non-filing of Reply to the FER. The second patent agent after that filed a Reply to the FER on 29th April 2019 in both matters. Various emails were also addressed to the patent office seeking a hearing; however, since no reply was received, the present Writ Petitions were filed to set aside the abandonment order.

Court Findings and Analysis: The Court referred to various cases and held that:

• The courts exercising writ jurisdiction may, in rare cases, permit the same after examining the factual matrix to see whether the Applicant intended to abandon the patent or not before concluding that an Applicant has abandoned its application due to non-filing of Reply to the FER/first statement of objections
• The Court could also consider any extraordinary circumstances, such as negligence by the patent agent, docketing error, and whether the Applicant has been diligent. However, lack of follow-up by the Applicant would be a circumstance that may lead to an inference that the Applicant intended to abandon the patent

The Court also noted that the consequences of the patent being abandoned are quite extreme i.e., the Applicant is deprived of exclusivity for the Invention completely. Thus a liberal approach may be taken in such matters, considering the intention of the Applicant to abandon the application and the efforts to pursue the matter.

Our comment:

The above case is an exception, and the statutory deadlines governing patent prosecution are generally not flexible. The objective of statutory deadlines is to enforce discipline and avoid unnecessary delays in granting patents. We note it is only in extraordinary cases that the Court may consider being flexible while dealing with such matters, and the outcome would depend on the facts of each case.