The ability to appeal the decisions, orders or directions of the Controller of Patents is a critical statutory right available to patent applicants. However, Section 117A of the Patents Act, 1970, delineates specific boundaries regarding which decisions, orders or directions can be appealed.

Notably, orders passed under Section 21(1) of the Patents Act, which pertains to the abandonment of a patent application due to failure to file a reply to the first examination report within the prescribed time, are not eligible for appeal under Section 117A. This restriction underscores the distinction between an application that is deemed abandoned under Section 21(1) and an application that is refused under Section 15, because an order passed under Section 15 is appealable. Understanding these distinctions is crucial for applicants to navigate the patent application process effectively and to determine the appropriate course of action.

Recently, in the case Sonalkumar Sureshrao Salunkhe vs. The Assistant Controller of Patents, Commercial Miscellaneous Petition No.8 of 2022, 2024:BHC-OS:7309, the Bombay High Court examined the scheme of Section 15 and Section 21(1) of the Patents Act.

In the instant case, while the Petitioner had filed a reply to the first examination report within the timeline prescribed, none of the objections raised in the first examination report were addressed barring one objection where a cursory response was provided. The Controller issued a hearing notice demanding an explanation from the Petitioner regarding why the application should not be deemed abandoned. A hearing was held whereby the Petitioner addressed the objections raised in the FER. Thereafter, the Controller passed an order whereby the petitioner’s application was deemed abandoned under section 21(1) based on the reason that the Petitioner had failed to comply with all the objections raised in the First Examination Report (FER) on a one-on-one basis within the prescribed time limit of 6 months.

The Petitioner argued before the Bombay High Court that since they had filed a reply to the FER their application could not be deemed abandoned u/s 21(1) and if at all the application was required to be rejected for a non-satisfactory response then the order becomes an order passed under section 15 and not under section 21(1).

The question for consideration before the Court was whether the impugned order should be treated as an appealable order under section 15 of the Patents Act or whether it could be treated as an order deeming abandonment under section 21(1).

Section 15 and Section 21(1) of the Patents Act under discussion in this case, read as follows:

Section 15 – Power of Controller to refuse or require amended applications, etc., in certain cases –

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.

Section 21. Time for putting application in order for grant –

(1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.

Explanation.—Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.

The Court, after reviewing the FER and the reply filed thereto, noted that various objections concerning inventive step, sufficiency of disclosure, definitiveness, and other requirements were raised in the FER. The reply, however, was only limited to some cursory comments regarding inventive step and no other objections of the FER were dealt with. Given these circumstances, the Court proceeded to analyse whether the impugned order should be regarded to have been passed under Section 21(1) or Section 15.

The Court determined that since the Petitioner failed to address many of the FER’s requirements within the specified time limit, Section 21(1) was rightly applied by the Controller for refusing to proceed with the subject application. The Court highlighted the following aspects discussed in the precedents, namely Telefonaktiebolaget LM Ericsson vs. Union of India and Ors. and Merck Serono S.A. vs. Union of India:

• Compliance with Requirements: Section 21(1) applies when an applicant fails to comply with all the requirements imposed by the Act within the prescribed time, leading to the application being deemed abandoned. In contrast, Section 15 involves the Controller’s satisfaction that the application or related documents do not meet the Act’s requirements, resulting in a refusal. Notably, Section 12 of the Patents Act requires an applicant to deal with the objections raised in the examination report. Therefore, not complying with this requirement puts the applicant in the purview of Section 21(1). Only when an applicant complies with all the requirements imposed by the Act does the question of the Controller’s satisfaction under Section 15 arise.
• Action and Satisfaction: Abandonment under Section 21(1) implies an intentional lack of action or response from the applicant, indicating the intention to abandon the application by not meeting the statutory requirements. Refusal or direction to amend under Section 15, however, involves an active decision by the Controller, based on the application or any specification or any other document filed in pursuance thereof, that the requirements of the Act are not complied with. Thus, if an applicant responds to each of the objections set out in the examination report within the time prescribed, it cannot be asserted that the applicant failed to respond to the objections.
• Pursue the application: When an applicant requests an opportunity to be heard in a timely filed reply to FER, it demonstratesthe applicant’s intention to not abandon its application. An application can be stated to be abandoned only when the applicant fails and neglects to pursue it in the prescribed time limit. When the applicant provides explanations regarding the objections raised in the examination report, whether the explanations have any merit or not is the subject matter of the Controller’s decision under Section 15.

The Court was of the view that the above findings indicate that so long as all the requirements imposed on the applicant under the Act are complied with by filing a response to the objections, the deemed fiction of abandonment under Section 21(1) of the Act would not apply. The Court clarified that “if the requirements are complied with, or, in other words, if the objections in the FER are responded to, then the case would not fall under Section 21(1) of the Patents Act.”.

The Court pointed out that in the instant case, the Petitioner did not deal with all the objections raised in the FER and cursorily addressed only one of the objections. Therefore, the Petitioner failed to comply with requirements under Section 21(1) and the application was rightly deemed to have been abandoned under Section 21(1).

In conclusion, the Court found the appeal to be non-maintainable under Section 117A of the Patents Act.