Delhi HC Reiterates that Delay in Filing a Patent Examination Request is Uncondonable

Last month, in a lucid and well-reasoned judgment (Sphaera Pharma Pte. Ltd and Anr. v. Union Of India), the Delhi High Court emphatically clarified that the Patents Act, 1970 does not offer any scope for considering a request for patent examination filed beyond the prescribed period of 48 months from the date of filing of the application. It reiterated the ruling rendered by it in 2011 in Nippon Steel Corporation v. Union of India that we had covered here.

Prescribed Deadline for Filing Patent Examination Requests

Section 11B of the Patents Act, 1970 r/w Rule 24B of the Patents Rules, 2003 stipulates that a request for examination of a patent application must be made within 48 months from date of priority or the date of filing of the application (whichever is earlier); otherwise the application will be not examined and treated as withdrawn by the applicant.

Facts and Arguments

In the present case, the petitioner Sphaera Pharma had attempted to file a request for examination of their patent application (No. 3584/DELNP/2015) within the prescribed time of 48 months from the date of the application, but the request did not get uploaded due to some technical reasons. Its patent application was consequently treated as abandoned under Section 11B, leading it to request the Patent Office for review of its application status. The review request was not considered by the Patent Office, prompting the petitioner to file a writ petition before the Delhi High Court for restoration of the application. Although the petitioner conceded that the request was not made within the prescribed period, it argued that under Rule 138 of the Patent Rules, the Controller of Patents retained the power to extend the prescribed time for a period of one month in certain cases.

Court’s Ruling

The Court, firstly, held that from a plain reading of Section 11B r/w Rule 24B it is clear that there is no scope for consideration of a request for patent examination which is filed beyond the prescribed period of 48 months from the date of filing of the application.

Secondly, it rejected the petitioner’s contention based on Rule 138, noting that a plain reading of sub-rule (1) of the said rule clearly indicates that the power of extension conferred on the Controller under this provision does not extend to the time prescribed under Rule 24B as its application to sub-rules (1), (5) and (6) of Rule 24B is expressly excluded. It further observed that even otherwise, the petitioner could not take recourse to Rule 138 because as per sub-rule (2) of the rule, it applies only to requests for extension made before the expiry of the prescribed time and the petitioner had not made any such request within the period of 48 months from the date of filing the patent application.

The court concluded by reproducing the following observation made by it in the Nippon Steel case on the same issue, where it clarified that the time-limit prescribed under the Act for filing a patent examination request is not directory but mandatory and it cannot be relaxed in any event:

“Here is a logic to the time limits set out under the Act. The scheme of the Act and the Rules require time-bound steps to be taken by applicants for grant of patent at various stages. The provisions of the Act and the Rules have to expressly reflect the legislative intent to permit relaxation of time limits, absent which such relaxation cannot be read into the provisions by a High Court exercising powers under Article 226 of the Constitution. In other words, it is not possible for this Court to accept the submission of the learned Senior counsel for the Petitioner that the time-limits under Section 11-B(1) of the Act read with Rule 24-B of the Rules, notwithstanding Section 11- B (4) of the Act, are merely directory and not mandatory. In fact, the wording of Section 11-B (4) of the Act underscores the mandatory nature of the time limit for filing an RFE in terms of Section 11-B (1) of the Act read with Rule 24-B of the Rules.”

The Lesson!

So, the lesson is, file the requests for examination of your patent applications well within the prescribed time limit of 48 months from the date of priority or the date of application. Because if you aren’t able to do so, whether due to a technical reason or an error in entering the priority date (as was the case in the Nippon Steel case) or any other reason, your application will be deemed to have been withdrawn and will not be examined under any circumstances whatsoever. In short, stick to the deadline no matter what as there’s no way out of it!