The Delhi High Court while disposing a writ petition in the recent case of Telefonaltiebolaget LM Ericsson v. Union of India once again reminded the Patent Office the true scope and impact of ‘deemed abandonments’ under Section 21 of the Patents Act, 1970.
Section 21 of the Patents Act is a deeming provision which deems a patent application to be abandoned if in case a patent applicant does not respond to a Patent Office request within the prescribed time period. Over the last few years there have been quite a few ‘deemed abandonments’. By rejecting a patent application as ‘abandoned’ the Patent Office saves itself the time and effort of rendering a reasoned decision.
The time-line in this particular case is as follows:
National Phase Patent Application No. 3380/DELNP/2005 on 29th July 2005 Invention “A Method and Apparatus For Supporting Content Purchases Over a Public Communication Network.”
Patent Published on 1st June, 2007
FER issued on 8th October, 2007
Reply to FER was filed on 10th December, 2007
Patent Office raised same objections on 25th July, 2008
Last date given to the applicant in this letter was 8th October, 2008
22nd September, 2008 – The Applicant replied to the Second Examination Report with request for hearing under Section 14
10th October, 2008 Patent Office deemed application to have been abandoned under Section 21(1) since last date for putting application in order expired on 8th October, 2008
The Delhi High Court falling back on precedent in the case of
Ferid Allani v.
Union of India 2008 (37) PTC 448 (Del.) (which we’ve blogged about
here) reiterated “that “abandonment” requires a conscious act on the part of the Petitioner which would manifest the intention to abandon the application.” The mere fact that the Petitioner’s second reply did not meet the requirements of the Patent Office cannot deem an application to be abandoned. Once an applicant has sent some form of reply to the Patent Office the application can be rejected only under the procedures prescribed in Sections 14 and 15. It must also be mentioned that while an Order under Section 21 is not appealable, an order under Sections 14 and 15 of the Patent Act is in fact appealable. A rejection under Section 21 therefore affects the substantial rights of the applicant.
Interestingly, there was no Government Counsel representing the Patent Office in this matter.
The Delhi High Court while disposing a writ petition in the recent case of Telefonaltiebolaget LM Ericsson v. Union of India once again reminded the Patent Office the true scope and impact of ‘deemed abandonments’ under Section 21 of the Patents Act, 1970.
wondering whether the due date of 8 Oct 2008 is extendable under the Indian Patents Act. Is so can it be extended after the expiry of the due date?