In AMST – Systemtechnik GMBH vs Government of India & Ors. [W.P.(IPD)No.2 of 2025], the Madras High Court set aside the Patent Office’s decision of treating patent application number 3022/CHENP/2011 as withdrawn under Section 11B(4) of the Patents Act, 1970, read with Rule 24B of the Patent Rules, 2003, due to belated request for examination (RFE).

Section 11B(4) stipulates that a patent application is treated as withdrawn by the applicant if the applicant or any other interested person does not make a request for examination of the application within the prescribed time period. The prescribed time period is set out in Rule 24B of the Patent Rules. Rule 24B, as it stood under the 2003 Patent Rules, prescribed a period of 48 months from the date of priority or the date of filing the application, whichever is earlier. By the Patents (Amendment) Rules, 2024, the prescribed period was shortened to 31 months, but the amended rule applies only prospectively and does not affect applications filed before its commencement.

In the instant case, the petitioner had filed its national phase application on 3 May 2011, derived from the PCT application filed on 6 October 2009. The PCT application claimed priority from 9 October 2008, however, the national phase application did not specify a priority date. The petitioner filed its RFE on 12 September 2013, well within 48 months from the date of filing the national phase application, but about eleven months beyond 48 months from the priority date specified in the PCT application.

Notably, the Patent Office did not act on the RFE for nearly nine years. It was only in response to a follow-up request made by the petitioner on 26 September, 2022, that the Office passed an order on 21 December 2023, holding that the application stood treated as withdrawn under Section 11B(4).

The petitioner contended that the RFE should be considered timely if computed from the date of filing the national phase application. In support, reliance was placed on Chandra Sekar vs The Controller of Patents and Designs & Anr. [W.P.Nos.12620 and 12621 of 2017] and France Telecom v. Union of India & Ors. [W.P.No.4958 of 2012], where under substantially similar facts, the Court had ruled that the application could not be treated as withdrawn.

The Court acknowledged that Rule 24B, as it stood under the 2003 Patent Rules, referred to the date of filing as well as the date of priority, with the 48 month period to be computed from the earlier of the two. The Court noted that, in the instant case, while the request was timely if calculated from the national phase filing date, it was beyond the prescribed limit if reckoned from the priority date. However, the Court emphasized that the legal fiction under Section 11B(4) serves a specific legislative purpose and should not be interpreted in a manner that extends its application beyond such object and purpose.

The Court took particular note of the prolonged inaction on the part of the Patent Office and the petitioner’s intention to prosecute the subject application by filing the RFE within two years of national phase entry. The Court remarked that the Patent Office could have communicated within a reasonable time that the RFE was delayed when calculated from the priority date. Instead, the Office remained silent for nearly nine years and acted only after the petitioner initiated a follow-up. The Court concluded that this prolonged inaction, coupled with the petitioner’s consistent efforts to pursue the application, demonstrated that the petitioner had not intended to withdraw its application.

Reaffirming its earlier rulings in Chandra Sekar and France Telecom, the Court concluded that in the interest of justice, the application deserved to be considered on its merits, and ordered its restoration.