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Can “Deemed To Be Abandoned” Patents Be Revived?

What is Section 21 of the Patents Act?

When a patent applicant does not comply with all the requirements as mandated by the statute within the prescribed time, the application is deemed to have been abandoned. For a long time this “deemed to be abandoned” provision under Section 21 of the Patent Act, 1970 has been under scrutiny, particularly since Section 21 can’t be appealed against.

For example, in Telefonaktiebolaget LM Ericsson vs. Union of India & Ors the appellants Ericsson despite having replied to the objections raised in the both the First and Second Examination Reports, were deemed to be abandoned under Section 21. This was because the examiner had decided the replies were not satisfactory.

The Court in this case decided that the Applicant/petitioner had met the objections raised by the Patent Office. Whether such replies were satisfactory or not, was completely a different matter. As long as there was no conscious effort on part of the Applicant/petitioner to abandon the application, such application cannot be processed along the lines of being” deemed to be abandoned.” The Applicant/Petitioner had not failed to comply with the statutory requirements. The Court therefore allowed a writ petition to be moved, as the applicant did not ignore the objection raised in the FER.

This is not the only pitfall Section 21 offers patent Applicants. And on 31 May 2022, we saw Justice Pratibha Singh of the Delhi High Court pass a writ petition in favour of the Petitioner for non-compliance in filing a response to the FER, on account of negligence on part of the patent agent.

Representation of Deadline

The Facts of the Case

In this case of European Union vs. Union of India, the Petitioners filed their patent application in several foreign countries.  They hired the European firm REYLINGE to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (‘PCT’) applications before the Indian patent office. Thereafter, a second firm called M/s GEVERS was hired for handling the prosecution communication.

Emails were exchanged between the first patent agent and GEVERS informing the patent agent of the movement of the files from FREYLINGE to GEVERS. The first patent agent had duly confirmed the receipt of instructions to the effect that the file has been transferred. However, GEVERS did not get further communication from the first Patent Agent, despite GEVERS writing several emails to the first patent agent requesting the report and invoice for the examination request that was filed in respect of both applications.

In hopes of redressal, the petitioners engaged a second Indian firm for aiding in the prosecution. This second patent agent informed the Petitioner that on account of non-filing of the response to the FER generated within the prescribed time period, the application was held as “deemed to be abandoned.” The Patent Office did not entertain any further date for hearings, so the Petitioners filed a writ petition against the order of abandonment.

The Court’s Rationale

The Court in this case accepted the argument of the Respondent that the Controller of patents had limited power to extend deadlines that are clearly prescribed in the Act. It was also accepted that extending the deadline beyond clear statutory limits for the FER response was not something the Controller could do, as this is not one of the cases where the Controller may exercise discretion via a vis the deadline.

That said, the Court also stated the following;

Thus, before arriving at a conclusion that an Applicant has abandoned its application, due to non-filing of Reply to the FER/first statement of objections, 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 which 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.

Para 52, European Union vs. Union of India

This observation essentially states that in peculiar circumstances (determined on a case to case basis), the Court (and not, crucially, the Controller of Patents) may still extend the deadline. In this case, it is the implied duty of a Patent Agent to know which timelines may be extended and which cannot be. And the negligence is clearly on the part of the Patent Agent and not the Applicant/petitioner.

The Court here took precedence of several important judgements where it was stipulated that the Controller has no authority to extend the time period for filing applications to necessitate the grant of the patent, but such power may be exercised by the Court through a writ in exceptional circumstances.

The Court held that in this [present matter, the Applicant/petitioner had followed duly diligent conduct, clearly showing no intention to abandon the patent. It had filed the patent application within the time prescribed, filed the Request for Examination within the time limit, and even followed up with the Patent Agent. There were clearly no signs of lapse on part of the Applicant nor did it indicate that there was any intention that the Applicant wished to abandon such patent application.

The Final Ratios

  1. Controllers do not have the power to extend the deadline for reply to Examination Report beyond what is specifically permitted by the Patents Act. Which is a deadline of 6 months, extendable by 3 months on application by Form 4.
  2. In rare cases, due to circumstances such as Patent Agent negligence or docketing error, the Court (and not the Controller) may decide to extend the time limits for the Applicant.
  3. Patent Agents are implicitly responsible for keeping track of timelines and other statutory requirements of the Patent Application process. So long as the Applicants themselves show no indication of wanting to abandon the application, negligence of the Patent Agent can be a reliable reason for extending deadlines beyond what is prescribed in the act.
  4. The degree of diligence by the Applicant and the degree of negligence of the Patent Agent is to be determined on a case-by-case basis.

Author: Dipanwita Chakraborty, Associate Trainee at PA Legal.

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