Two application that had been abandoned due to non-filing of response to the examination report have been restored by the Delhi High Court.

The facts of the case are as follows:-

• Two writ petitions, W.P.(C)-IPD-5-2022 & W.P.(C)-IPD-6- 2022 had been filed by the Petitioner- the European Union is seeking setting aside of orders dated 21st January, 2019 and 30th September, 2019, passed by the Controller General of Patents. Vide the said orders, two patent applications bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013, filed by the Petitioner have been treated as ‘deemed to have been abandoned’ under Section 21(1) of the Patents Act, 1970 (hereinafter, ‘the Act’).
• The Petitioner, through the initially engaged European Law Firm, M/s FREYLINGE had engaged a first patent agent in India to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (hereinafter, ‘PCT’) applications before the Indian patent office. Thereafter, the responsibility of processing, prosecution, maintaining and coordination of these applications were moved by the Petitioner to another European firm namely, M/s GEVERS in June 2017.
• Emails were exchanged between the first patent agent and M/s GEAVERS informing the patent agent of the movement of the files from M/s. FREYLINGE to M/s.GEVERS. The first patent agent had duly confirmed the receipt of instructions to the effect that the file has been transferred. The First Examination Reports (hereinafter ‘FER’) were issued by the Patent Office on 10th April, 2018 for 11123/DELNP/2012 and on 29th June 2018 for 3466/DELNP/2013 respectively. However, due to non-filing of the Reply to the FER within the stipulated time, both the applications ‘deemed to have been abandoned’.
• Even prior to the abandonment of the applications, M/s GEVERS wrote several emails to the first patent agent. However, M/s GEVERS did not get any response from the first patent agent.  In view of the fact that the firm did not hear from the first patent agent, the files of these applications were moved by the Petitioner to another Indian firm – second patent agent, in February 2019, which then informed the Petitioner that the patent applications were ‘deemed to be abandoned’ in view of non-filing of reply to the FER. The second patent agent after learning of the abandonment of both the applications filed its reply to the FER on 29th April, 2019. Various emails were also addressed to the patent office seeking a hearing, however, since no reply was received, the present Writ Petitions have been filed seeking setting aside of the order of abandonment.

The Petitions filed by the petitioner essentially on the ground that:-

• The delay in filing the reply to the FER, was completely not attributable to the Applicant. Despite continuous follow-up, the first patent agent had not responded.
• Under these circumstances, the delay in filing the responses, deserves to be condoned as the Petitioner’s valuable rights in the patents have been completely lost due to the negligence of the first patent agent which could not have been the fault of the Petitioner.
• The subject patents were international applications filed in over several jurisdictions and have been granted in many of these jurisdictions

The Court noted that in Ferid Allani v. Union of India [W.P (C) 6836 of 2006, decided on 25th February, 2008], Telefonaktiebolaget Ericsson v. Controller of Patents [W.P (C) 9126 of 2009, decided on 11th March, 2010] and PPNB Vesper Life Sciences v. Controller General of Patents, [W.P 22253 of 2021] High Courts while exercising writ jurisdiction have granted extension in filing of the response to the FER including on the ground that the applicant did not have the intention to abandon.

The Court also noted that the provisions of the Act and the Rules are abundantly clear as to which deadlines can be extended and which cannot be extended. Non-extendable deadlines include inter alia – deadlines relating to entry of the application into the national phase,  timelines for filing of request for examination, timelines for putting an application in order for grant etc.,

The Court note that in the facts of the present case, the Applicant had undertaken the following actions – • Initially, filed the application in several foreign countries, • Entered India within the prescribed period, • Obtained the grant of patent for corresponding applications in several foreign countries, • Filed the request for examination within the prescribed period, • Followed up continuously with the patent agent even during the prescribed period as to the status of the applications.  The consequences of patent being abandoned is quite extreme i.e., the Applicant is deprived of exclusivity for the invention completely. In the opinion of the Court, such a consequence ought not to visit the applicant for no fault of the Applicant. In the facts of these cases, the Court held that, the Applicant had no intention to abandon the application. It has taken all measures possible to prosecute these applications. The Applicant was conscious of the fact that the patent may be maturing for examination and took the initiative to keep in touch with the patent agent

The Court was convinced that there was no intention to abandon on behalf of the Petitioner, instead, the Petitioner’s actions indicate that they were actively pursuing the application. In the opinion of the Court, the mistake of the patent agent would be similar to the mistake of an advocate who may be representing parties in any civil or criminal litigation. Insofar as any mistake committed by counsels/advocates are concerned, the settled legal position as per the Court is that the litigants ought not to suffer.

The Court was therefore of the opinion that the present two applications would fall in the category of exceptional circumstances, where the response to the FERs deserve to be taken on record. Accordingly, it directed that the response to the FER be taken on record by the patent office. The application nos. 11123/DELNP/2013 and no. 3466/DELNP/2013 be restored to their original position.