Strict Adherence to Patent Timelines

Introduction

Introduction: This case study examines a significant judgment from the High Court at Calcutta concerning the abandonment of a patent application due to non-compliance with statutory timelines under the Patents Act, 1970. The petitioner, a foreign entity, challenged the rejection of its patent application as abandoned, invoking the writ jurisdiction under Article 226 of the Constitution of India. The court delved into the mandatory nature of procedural deadlines in patent prosecution, the impact of external factors like the COVID-19 pandemic, and the limits of judicial discretion in such matters. This analysis highlights the tension between equitable considerations and strict adherence to legislative intent in intellectual property law, underscoring the importance of diligence in pursuing patent rights.

Factual Background

Factual Background: The petitioner, Kylin Sanitary Technology (XIAMEN) Company Limited, a company incorporated under the laws of China, filed a patent application in India bearing number 202034009705 on March 6, 2020. As a foreign entity, it engaged the services of an Indian patent attorney to handle the proceedings. A request for examination was submitted on April 18, 2020. The First Examination Report was issued by the patent office on August 16, 2021, outlining objections that needed to be addressed.

The statutory period of six months for responding to these objections and putting the application in order for grant expired on February 16, 2022. An additional three-month extension period, as provided under the rules, also lapsed without any action from the petitioner. It was only on December 1, 2022, that the petitioner communicated with its Indian patent agent through an international attorney, attributing prior delays to the COVID-19 pandemic and alleged negligence by the Indian agent. On December 29, 2022, the application was deemed abandoned. The petitioner first raised a grievance with the Controller on May 23, 2023, via a representation, which led to further proceedings culminating in the impugned order of June 24, 2024, rejecting the application as abandoned.

Procedural Background

Procedural Background: The patent application process began with the filing on March 6, 2020, followed by a request for examination on April 18, 2020. After the issuance of the First Examination Report on August 16, 2021, no response was filed within the prescribed six-month period or the subsequent three-month extension. The application was treated as abandoned on December 29, 2022. The petitioner submitted a representation to the Controller on May 23, 2023, seeking revival.

This prompted a prior writ petition before the High Court, which directed the respondents to consider the representation. Pursuant to this direction, the Deputy Controller of Patents and Designs passed the impugned order on June 24, 2024, upholding the abandonment under section 21(1) of the Patents Act, 1970, read with Rule 24B of the Patents Rules, 2003. Lacking an appellate remedy against such an order, the petitioner filed the present writ petition under Article 226, arguing that the abandonment was unjustified due to external circumstances and agent negligence.

Core Dispute

Core Dispute: The central issue revolved around whether the patent application could be deemed abandoned for failure to comply with the mandatory timelines under section 21(1) of the Patents Act, 1970, and Rule 24B of the Patents Rules, 2003, despite the petitioner’s claims of no intentional delay, the impact of the COVID-19 pandemic, and negligence attributable to its Indian patent agent. The petitioner contended that the abandonment was erroneous, as any delay was unintentional and excusable, emphasizing the absence of mala fide intent and relying on equitable principles. In contrast, the respondents asserted that the timelines were mandatory and non-negotiable, with no provision for relaxation beyond the stipulated extensions, and that the petitioner’s inaction constituted deliberate neglect, rendering the application unsustainable.

Discussion on Judgments

Discussion on Judgments: The petitioner relied on European Union Vs. Union of India reported in 2022 SCC OnLine Del 1793, where a Coordinate Bench of the Delhi High Court held that abandonment could not be inferred if there was no intention to abandon, particularly when the applicant had taken active steps to pursue the application, and any mistake was excusable under the facts of that case. This citation was used to argue that the petitioner’s delays, stemming from the pandemic and agent negligence, did not reflect deliberate inaction and should warrant setting aside the abandonment order.

On the other hand, the respondents cited Nippon Steel Corporation Vs. Union of India (2011) SCC OnLine Del 669, in which the Delhi High Court emphasized the mandatory nature of time limits under the Patents Act and Rules, stating that such limits could not be relaxed by courts under Article 226, as they reflect legislative intent for time-bound patent prosecution; this was invoked to support the sustainability of the impugned order due to the petitioner’s violation of fixed timelines. Additionally, the respondents referred to Carlos Alberto Perez Lafuente Vs. Union of India reported in (2019) SCC OnLine Del 7404, where similar views were expressed, reinforcing that failure to comply with stipulated periods results in mandatory abandonment, without room for procedural leniency; this judgment was used to highlight the inordinate and unexplained delay in the present case, justifying the treatment of the application as abandoned.

Reasoning and Analysis of the Judge

Reasoning and Analysis of the Judge: The judge began by outlining the relevant provisions, including sections 11B and 21 of the Patents Act, 1970, and Rules 24B(5) and (6) of the Patents Rules, 2003, which establish a structured, time-bound mechanism for patent prosecution, deeming applications abandoned upon non-compliance. Emphasizing that these timelines are mandatory rather than directory, the judge noted that courts cannot read in relaxations absent express legislative provisions, as this would undermine the Act’s objective of efficient processing. The judge distinguished the petitioner’s cited case by pointing out that in European Union Vs. Union of India, active pursuit and excusable error were evident, unlike here where the petitioner exhibited indolence, with no timely response or extension request filed.

Aligning with the respondents’ precedents, the judge affirmed that fixed timelines must be strictly adhered to, and the writ court’s discretionary power under Article 226 cannot circumvent statutory rigors. The excuse of COVID-19 was dismissed as insufficient, given the extended periods already accounting for such disruptions, and the first communication occurring well after deadlines. The judge invoked the doctrine of laches, stating that equity aids the vigilant, not the indolent, and found no basis for discretion in the petitioner’s favor due to lackadaisical conduct.

Final Decision

Final Decision: The writ petition was dismissed without any order as to costs, upholding the impugned order deeming the patent application abandoned.

Law Settled in This Case

Law Settled in This Case:This judgment reinforces that timelines under section 21(1) of the Patents Act, 1970, and Rule 24B of the Patents Rules, 2003, for responding to examination reports and putting applications in order for grant are mandatory and non-relaxable by courts, even under writ jurisdiction, absent exceptional circumstances demonstrating active pursuit without intentional delay. It clarifies that external factors like the COVID-19 pandemic or agent negligence do not automatically excuse non-compliance if not addressed within stipulated periods, emphasizing diligence and the doctrine of laches in patent prosecution.