Patent

Irregularity in patent restoration matters?


This post deals with a challenge to a patent restoration application that was allowed in contravention of Section 60 of the Patent Act. The Petitioner, the winning party in this case, was represented by Anand and Anand.

In 2009, the Controller of patents issued a renewal certificate to respondent No. 2 for restoring its patent no. 186320. The petitioner, Sanat Products challenged this renewal by way of a writ petition in 2010. The petitioner argued that the respondent’s patent could not have been restored as the application for restoration was filed beyond the time limit prescribed under Section 60 of the Patent Act.

Once a patent is granted, the term of exclusivity/monopoly is 20 years. Once these 20 years lapse, the patent is said to have ‘expired’ and is therefore not protected anymore. However, even within this 20 year period, the patent can ‘cease to have effect’ if certain administrative conditions laid down in the Act are not fulfilled by the patentee. One such event is the non payment of renewal fees within the prescribed time period (as per Section 53 and Section 142).

The Act, however, under Section 60, provides a mechanism to ‘restore’ patents that have ‘ceased to have effect’ due to failure to pay renewal fees. This section clearly lays down that such an application for restoration must be made within 18 months from the date on which the patent ceased to have effect. This application must set out the reasons for failure to pay renewal fees.  Thereafter, the application is published and any person interested may oppose (within the prescribed time) the application on the grounds that the failure to pay was not unintentional or that there has been undue delay in making the application for restoration (Section 61). It is after all this that the Controller decides whether or not to restore the patent. Such a decision, being quasi judicial, requires to be well reasoned.

In the present case, the respondent’s patent ‘ceased to have effect’ (though the judgement uses the word ‘expired’) on 15.9.2006. But the application for restoration was filed only on 2.2.2009 i.e. almost 29 months after the patent lapsed. Despite this, the Controller accepted the application and renewed the patent without recording adequate reasons. Since, Section 60 provides for a time period of 18 months and requires a reasoned decision, the Controller’s acceptance was clearly liable to be challenged. The manner of the challenge should have been as per Section 61 i.e. before the Controller as an opposition. However, the petitioners chose instead to directly file a writ petition.

The court set aside the renewal order and remanded the case back for hearing (see decision here).

It is interesting to note that the Controller in the Rubicon Research Pvt. Ltd patent restoration matter (acting through D.P. Ahuja as patent agents), which i had blogged about here, had unequivocally held that since timelines have been specifically provided in Section 60, this is a mandatory section and cannot be evaded. Moreover, it was held that condonation of delay under the Limitation Act does not apply to the Controller. An argument on Rule 137 was also raised stating that the Controller can correct any irregularity if no detriment is caused to the interest of any person. However, this power can be exercised only in cases where there is no special provision contained in the Act to deal with irregularities. But for restoration, since the Act itself prescribed timelines, the Controller was bound by them. Given this detailed decision, it becomes quite clear that the present restoration application should also be rejected.

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Aparajita Lath

Aparajita graduated from the WB National University of Juridical Sciences, Kolkata. She was formerly an editor of the NUJS Law Review. She is a lawyer based in Bangalore. All views expressed by her on the blog are her personal views.

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