The Delhi High Court, in its decision in the case of Bry-air (Asia) Pvt. Ltd. vs Union of India [W.P.(C)-IPD 17/2024, 2024:DHC:7431, judgement dated September 26, 2024], underscored that abandonment of a patent application per se ought not to be presumed without examining the Applicant’s intent. The Court exercised its writ jurisdiction to permit the revival of the Petitioner’s patent application number 4154/DEL/2015 which was deemed withdrawn under Section 11B(4) of the Patents Act, 1970, for failure to file a request for examination of the subject application within the prescribed time limit. The Court allowed the reinstatement of the subject application noting the patent agent’s negligence and the positive intent of the Petitioner to pursue their application.  

Section 11B(4) of the Patents Act provides that if an applicant or any other interested person does not make a request for examination of the application for a patent within the prescribed period, the application shall be treated as withdrawn by the Applicant.

In the instant case, the patent agent who was handling the portfolio of the Petitioner failed to request examination of the application within the prescribed time. This happened despite the Petitioner being assured by the patent agent that all the necessary actions in relation to the subject application had been taken. In fact, the Petitioner learnt that many of their other patent applications were also deemed abandoned and their patents had lapsed due to non-renewal. Upon deliberations, the agent provided an affidavit affirming that the Petitioner had no fault or intention to abandon any of the applications or patents. As a result, the Petitioner was successful in restoring many of their patent applications and granted patents all over the world, including in India.

The Court noted that Section 117A does not allow for an appeal against the order of deemed withdrawal of an application and referred several judicial precedents where the Courts have exercised their writ jurisdictions and extended the time prescribed in extraordinary situations. The Court highlighted that when a patent agent is found to be negligent in prosecuting an application and there is no wilful contributory negligence on the part of the Applicant, the Court ought to adopt a liberal approach and give the benefit of doubt to the Applicant while exercising the writ jurisdiction under Article 226 of the Constitution. In view of the foregoing, the Court held that in the cases where the express intentions and implied actions coupled with the overall conduct of the Petitioner reflect that the Petitioner was willing to pursue its application, the Petitioner should not be made to suffer and benefit ought to be extended to them. The Court concluded that the patent agent’s negligence in the instant case constituted an ‘extraordinary circumstance’ and directed the Patent Office to restore the subject application and afford an opportunity to the Petitioner to file the request or examination.