Extraordinary Exceptions To Deadlines At The Indian Patent Office

• Published date: 10 August 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Obhan & Associates
• Author: Mr Essenese Obhan and Ayesha Guhathakurta

When hardcoded statutory deadlines are violated, can delays be condoned? This was the central question answered by the Delhi High Court in The European Union Represented by the European Commission vs. Union of India. The court allowed for an extension of a non-extendable statutory deadline in a patent matter because of the exceptional circumstances of the case. The decision, though, came with fair warning that this was in exercise of the court's discretionary power, and the patent agent could not be excused for the error of its ways. It also raises important questions on the regulation of patent agents and the state of patent prosecution in India.

Facts of the case

The petitioner (patent applicant), through its patent agent, filed two patent application with the Indian Patent Office (IPO) as national phase entries of its Patent Cooperation Treaty (PCT) applications. In accordance with procedure, the IPO proceeded to issue First Examination Reports (FERs) for these applications. However, the patent agent in question failed to inform the applicant of the FERs. As a result, the FERs were not responded to in time, and in accordance with the Indian Patents Act, 1970 (the Act), the application was deemed as abandoned by the IPO.

The applicant then engaged another patent agent to rectify this situation, and the second agent filed for a condonation of delay at the IPO, regularly following up on this. The IPO refused to acknowledge the same, and eventually, the agent and applicant approached the Delhi High Court via writ petitions challenging the Controller's orders of abandonment.

Key analysis

Two aspects led to the decision going in favor of the applicant:

1. The negligence of the first patent agent
2. Intention to not abandon the application

Negligence of the Agent

There was ample proof that it was the actions of the first patent agent that led to this entire situation in the first place. Patent agents are expected to know which deadlines are extendable and which are not, and keep applicants apprised of these. The court emphasized the importance of the role of a patent agent and called out the negligence in the present case. Persistent follow-up by the applicant with the first agent regarding the status of their applications, despite not receiving any response or even an acknowledgement, played a significant role in demonstrating that there was no intent to abandon the application.

The court was of the opinion that the entire fault lay with the patent agent and the...