A recent Indian Patent Office (IPO) order regarding Indian Patent Application 2440/DELNP/2006 rejected a petition for condonation of delay filed under Rule 137 of the Patent Act 1970 by a patent agent on behalf of the applicant, and accordingly rejected the patent application based on negligence by both the patent agent and the applicant in regard to the time limits set under the Patent Act. The petition was filed based on a lack of knowledge of the issuance of the first examination report, and the non-receipt of communications from the previous patent agent about the issuance of that report. This reasoning was held to be unsatisfactory and insufficient to meet the criteria provided in Section 21(1) of the act to excuse a patent applicant for failing to file a document before the controller by the response deadline for the first examination report.

The controller held that a response submitted to the first examination report after the deadline could not be recorded for further processing, and the application would be deemed to be abandoned under Section 21(1) of the Patent Act (as amended). The applicant's argument that it was not informed of the issuance of the first examination report by the patent agent was held to be untenable since the status of every patent application is freely available on the IPO website. Moreover, as the applicant had requested a change in the service address (ie, the applicant had retained a different patent attorney to further prosecute the application) one month before the response deadline it was clear that it was exercising due control over the case and had sufficient time to respond to the first examination report. Further, even when submitting a petition of condonation of delay under Rule 137 of the Patent Rules after expiry of the deadline, the applicant was not in possession of the response to the report, and submitted it only after the 15-day period following the submission of the petition.

The controller held that this clearly indicated negligence on the part of the patent agent and applicant, and it was hard to believe that the delay was unintentional. Although the term 'unintentional' could apply where the agent or the applicant has genuine reasons to believe that no first examination report had been issued and thus no deadline existed, the facts in the case at hand clearly indicate otherwise.

Specifically, the controller found that there appeared to be negligence not only on the part of the patent agent, but also on the part of the applicant. While the previous agent had a moral obligation to transfer all previous proceedings to an authorised patent agent so that the patent application could be processed, the applicant was also duty bound to ensure a smooth handover between the patent agents. The controller rejected the applicant’s argument that the response to the first examination report should be recorded after the deadline had expired under Section 81 of the Patent Act, as no such provision is mentioned in that section.

As far as the statutory nature of the period for complying with objections was concerned, the controller quoted the Delhi High Court decision in Nippon Steel Corporation v Union of India (WP (C) 801 of 2011), which held that there was logic to the time limits set out under the act. The act and the rules require time-bound steps to be taken by patent applicants at various stages. The act and the rules must expressly reflect the legislative intent to permit the relaxation of time limits; in the absence of this, relaxation cannot be read into the provisions by a high court exercising its powers under Article 226 of the Constitution. In other words, it was not possible for the court to accept that the time limits under the act read with the rules were merely "directory” and not "mandatory".

The controller further cited decisions in RN Jadi & Brothers v Subhashchandra ((2007) 6 SCC 420) and Mohammed Yusuf v Faij Mohammad ((2009) 3 SCC 513), wherein the Supreme Court held that the time limits as prescribed in the act or the rules are statutory and not merely directory in nature.

The controller specifically averred that since it is the applicant which ultimately enjoys the rights of the granted patent, the applicant remains duty bound to take cognisance of all patent application proceedings from patent agents. Both the applicant and its agent should be vigilant while dealing with patent applications and adherence to deadlines.

Comment In the case at hand, the controller clearly emphasised that while a newly retained patent attorney taking over a pending patent application may not be assisted by the outgoing patent attorney, the applicant is duty bound to compensate for such non-cooperation and should ensure a smooth handover to guarantee full compliance with any approaching deadlines. A newly retained patent attorney defaulting due to a lack of information or communication from the former agent is insufficient grounds to request more time to comply. Similarly, the applicant must also adhere to the deadlines, and cannot use the agent’s omission to its own advantage.

This article first appeared in IAM. For further information please visit www.iam-media.com.