The Delhi High Court’s decision in the case of SPV Laboratories Pvt. Ltd. vs The Controller General of Patents and Designs [C.A.(COMM.IPD-PAT) 41/2024], emphasizes the importance of adopting a liberal approach in considering timely filed applications for restoration of lapsed patents under Section 60 of the Patents Act, read with Rule 84 of the Patents Rules.

In this case, the Appellant’s patent had lapsed due to non-payment of renewal fee within the prescribed time period of three months, further extendable by six months, in accordance with Section 142(4) of the Patents Act. Thereafter, the Appellant filed an application for restoration within the prescribed time period, explaining that the delay in paying the renewal fee had occurred due to an emergency in the family of their authorized attorney.

The Controller, however, rejected the restoration request on the ground that the Appellant had failed to meet the requirements set out in Section 60(3) of the Patents Act, read with Rule 84(3) of the Patents Rules. Specifically, the Controller held that the claim of family emergency was not substantiated with sufficient documentary evidence.

Section 60(3) mandates that the application for restoration must include a verified statement fully setting out the reasons for the failure to pay the fee. It also empowers the Controller to call for further evidence, if deemed necessary.

Rule 84(3) provides that if an applicant seeks a hearing within the prescribed period and the Controller, after hearing the applicant, is prima facie satisfied that the failure to pay the renewal fee was unintentional, the Controller shall publish the application for restoration.

During the appeal proceedings, the Controller tried to justify the refusal by arguing that the application did not specify whether the emergency impacted both attorneys responsible for managing the patent or only one.

The Court noted the Appellant had been diligent in pursuing their patent application and had also duly filed the required statements regarding the working of the patent. The Court further emphasized that there was no reason to doubt the explanation provided by the Appellant for the non-payment of fee. The Court opined that such a procedural lapse should not bar the restoration of the patent, particularly when the application for restoration was filed within the prescribed time period. The Court concluded that the Controller ought to have taken a more liberal approach and restored the patent.

In view of the foregoing, the impugned order was set aside and the Controller was directed to restore the patent and accept the renewal fee.