On November 4th, the Madras High Court directed the restoration of two previously ‘deemed abandoned’ patent applications as well as the completion of examination of these restored applications within 6 months. The order, Chandra Sekar v. Controller of Patents and Designs (pdf), appears to be picking up on the not infrequent situations of applications being ‘deemed abandoned’ after apparent negligence from the applicant’s patent agent.
In this case, the applications were ‘deemed to be abandoned’ due to delay in filing of the request for examination of the Plaintiff’s application (Form 18). The statutory time limit to file Form 18 is 48 months from the date of the priority application. Here, the request was filed 22 days after the expiry of the time limit. However, after looking into communications between the applicant and the patent agent, the Court directed the patent office to restore these applications since the lapse occurred due to negligence on the part of the Applicant’s patent agent and not the Applicant themself.
Earlier, in October 2022, Delhi High Court, in Bry-Air Prokon Sagl & Ors v. Union of India, had directed the patent office to restore both – the status of a patent application as well as a lapsed patent. The court had opined that the delayed filing of the response to the First Examination Report (i.e. after the statutory limit of 6 months from the date of issuance) was not arising out of any lack of interest from the Applicant’s end but rather occurred due to negligence of its Patent Agent. Similarly, the Court ruled that the responsibility to pay the renewal fees was a part of the Patent Agent’s terms of engagement and thus ruled that the Applicant should not suffer because of the negligence of its Patent Agent.
Another decision with a similar fate was the European Union v. Union of India (pdf), decided by Delhi High Court in May 2022. Here too, the court held that the delay in filing the responses to the First Examination Reports arose from the negligence of the Patent Agent and not because of any disinterest on part of the Applicant towards its applications.
In all three cases above, the courts have paid heed to the correspondence between the Applicants and their respective patent agents, to conclude that the Applicant did all that it could to show interest in their patent applications. This included follow-up requests, filing letters to condone the delay etc.
Justice Singh in the European Union case, relies on Ferid Allani, Tele Ericsson, and PNB Vesper orders to provide an exception to the normally mandatory and non-extendable time period, stating that “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. 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. Thus, the court would have to examine the circumstances in the peculiar facts of each case.“
These orders can surely be the reason for a sigh of relief by patentees and restore, much like the patent applications, faith in the Indian patent ecosystem. However, the frequency of these orders for restoration also throws light on the need for some introspection on ways to ensure a more seamless and robust mechanism of patent prosecution/renewal. Are some kinds of additional checks needed here? Or is it sufficient that the courts are active and quick when these matters come up. It would be interesting to hear our readers’ comments on this. And on that note, perhaps also worth looking at the other side of the coin as highlighted by a comment on Aparajita’s post -”It will be of interest to note that there is no patent attorney in the world who has not faced similar issues relating to Patent renewal. The fact remains that clients will blame anybody but themselves for such lapses and mishaps.” If these lapses and mishaps are still uniform and not specific to a handful of agents, then maybe the notification/ intimation approach adopted by the Patent office warrants revision to avoid such litigations.
H/t to Mr. K Muthu Selvam and one of our anonymous readers for pointing us to these developments. I would also like to thank Swaraj for his inputs on the piece.
If it were some isolated instances, there was definately not a cause of concern. But as the post compiles, these are more than one instces within a short span of time. So, surely, it appears as worrying trend for the industry, across the science & technology spectrum, to have certainty on the FTO issues.
Definately, when you are on the receiving side of such issues, you would be more than happy to get the rights restored. However, the courts should also take in to consideration the competing public rights also. No follow-up litigation or validity challenge has surfaced after these decision (at least not in my knowlege) so we presume that these restoration were ‘harmless’ to the public. But what if a ‘person’, reling upon the information of abandonment, had started making/using the invention, invested ‘heavily’ on it and then he got a rude shock of reinstatement? What remedy in the interest of ‘equity’ and ‘justice’ can be thought of for such use of the invention? Shall the party be ‘forced’ to discontinue practicing the invention? or shall they be ‘forced’ to take a licence? and What about the ‘certainty’ element of the Patent Act – One must be certain whether they are/will infringe. Such instances would tend to shake that position.
While the courts have restored some private rights, they have not provided the remedies or safegaurds for the broader public rights . The questions are made to rest, probably untill such real life situations arise in future.