Delhi High Court rules on 'deemed abandonment' of patent application

The Delhi High Court recently overturned a patent office decision that an application should be deemed abandoned, say Manoj Singh and Shrimant Singh.

The Indian Patents Act, 1970 provides that if an applicant does not comply with the requirements of the act or the instructions of the patent office within the prescribed time limit, then the patent application shall be deemed ‘abandoned’.

The Delhi High Court on March 11, 2010, in Telefonaktiebolaget LM Ericsson v. Union of India and Ors looked into the issue of ‘deemed abandonment’ under Section 21(1) of the act. This case raised an important issue regarding the rejection of an application by the Controller of Patents under this section.

According to Section 21(1), a patent applicant has to meet all the requirements or answer the objections raised by the patent office within 12 months (rule 24B(4)) from the date of issuance of the first statement of objections; upon failure to comply, the patent office may treat the application as abandoned by the applicant.

Section 21: Time for putting application in order for grant, states that:

“(1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.”

Rule 24B: Examination of Application states that: “(4) the time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements.”

“‘Abandonment’ requires a conscious act on the part of the Petitioner which would manifest the intention to abandon the application.”

In this case, the application was filed on July 29, 2005. It was published in the Official Journal of Patents by the patent office and the first examination report (FER) was issued by the controller on October 8, 2007, highlighting defects and shortcomings in the application. The petitioner filed its reply to the FER on December 10, 2007.

A second FER was then sent to the petitioner reiterating the issues mentioned in the first FER. The reply to this FER was also filed by the petitioner within the stipulated timeframe on September 22, 2008, along with a request for a hearing.

On October 10, 2008, the controller issued an office letter to the petitioner stating that “the last date for putting the application in order for Grant has been expired on 8th September 2008, hence the Application has been deemed to be abandoned under section 21(1) of the Act”. The patent application was therefore rejected, resulting in the present case.

The High Court observed that the petitioner’s grievances are two-fold: