TIME LIMIT TO FILE REPLY TO FIRST EXMANINATION REPORT IN PATENT APPLICATION, IS DIRECTORY

DATE OF JUDGEMENT: 31.05.2022:

CASE NO:W.P.(C) IPD No. 5 of 2022 and WP(C)IPD No.6 of 2022

CASE TITLE: The European Union Presented by the European Commission Vs Union of India and Ors.

NAME OF HON'BLE COURT: Hon'ble High Court of Delhi

NAME OF HON'BLE JUDGE: HON'BLE JUSTICE Ms.Prathiba M Singh

Brief Fact of the Case:

The Petitioner filed 2 Patent Application through one Indian Patent Agent through European Law Firm namely Freylinge. By passage of time , the Petitioner engaged another European Law firm namely another European firm namely Gevers.

Gevers wrote various letters and reminders to the first Patent Agent to regarding subject Patent Applications , but there was no any response from first Patent Agent.

In such a situation, the Petitioner engaged another Indian Firm for pursuing both the Patent Applications. Then It came to the notice of of the Petitioners that both of the Patent Applications have already been treated as abandoned because of non filing reply to first examination report.

Question was this, whether in the Writ Jurisdiction, the Hon'ble High Court of Delhi could have condoned the delay in filing the reply to first examination report?

Finding of Hon'ble Court: After discussing various Judgements cited by the parties, the Hon'ble High Court of Delhi observed that time line for prosecuting the Patent Applications are of two kind.

First set of time line is mandatory, which can not be condoned. Like Requesting for issuance of first examination report. The Hon'ble High Court of Delhi also observed that deadlines relating to entry of the application into the national phase, timelines for filing of request for examination and ? timelines for putting an application in order for grant etc. are mandatory in nature.

While Second Set of time like is directory, which can be extended. Like filing reply to First Examination Report. This time line was held to be directory. More over in the present case, it was never the intention of the Petitioners to abandon the Patent applications.

The said Applications have already been granted in favour of the Petitioners in various countries, list where of have been provided.

The Hon'ble Court , while condoning the delay in filing reply to First Examination Report, also observed that negligence of Patent Agent can also be equated with negligence of lawyer. Hence the Hon'ble Court also observed that it is settled proposition of law that a litigant can not be allowed to suffer on account of mistake of advocates.

In such a situation, both the afore mentioned writ petitions were thus disposed off after taking on record the reply to first examination report filed by the Petitioner in both the Patent Applications.

Ajay Amitabh Suman, IPR Advocate, Hon’ble Delhi High Court [email protected], 09990389529