Introduction
The importance of following due process when handling patent applications cannot be emphasised enough. The Indian Patents Act, 1970 ("the Act") contains detailed timelines and schedules for the filing and prosecution of patent applications, and it is expected that applicants, agents, and examiners alike, all follow these timelines. There is an occasional condonation of delay, but this is more the exception than the rule. Additionally, merely objectively meeting the stipulated timeline may not be sufficient, and applicants may have to substantially meet the stipulated requirements as well.
As the Bombay High Court explains in Sonalkumar Sureshrao Salunkhe vs. The Assistant Controller of Patents (COMM. MISC. PETITION NO.8 OF 2022, Decision dated 6 May 2024), the detailed timeline provisions leave very little room for manouvering.
A brief explanation of the timeline is useful:
- After examination of a patent application, the Indian Patent Office ("IPO") issues a first examination report ("FER").
- The applicant must file a response to meet objections raised in the FER within six months. An extension of three months can be sought.
- If the IPO is not satisfied with the response, a hearing may be appointed, in response to which the applicant can submit written submissions and claim amendments within 15 days from hearing date.
- If objections are met, the application is granted.
- If, however, objections are not met, an order of refusal is issued. An order of refusal may be issued under Section 15 or Section 21(1) of the Act.
- These two provisions work in different ways:
- Section 15 ('Power of Controller to refuse or require amended applications, etc., in certain case') – Generally, this power is exercised when the applicant files a response to the FER and attends the hearing.
- Section 21 (1) ('Time for putting application in order for grant') – This provides the timeline for filing a response to objections raised in an FER. The applicant must comply with all requirements in the prescribed time, failing which the application is deemed abandoned. Thus, an order under Section 21(1) is issued when an applicant chooses not to file a response to the FER.
- Another key difference between the two provisions is that, while an appeal lies to the High Court for orders issued under Section 15, this remedy is not available for orders issued under Section 21(1).
Prosecution history of Patent Application No: 174/MUM/2015
After being filed on 1 January 2015, the patent application went through various stages of the prosecution process, which are encapsulated in the table below. These dates and developments are important to understanding the decision of the Bombay High Court.
| Stage | Date / Details |
| Application Date | 1 January 2015 |
| FER | 24 June 2019
The FER listed several substantive objections, including around inventive step, sufficiency of disclosure, definitiveness, the format of claims, and a list of "Formal requirements". |
| Response to FER | 24 December 2019
The applicant's agent responded to the FER on the last date stipulated for such filing (without extension). This was a two-page response: – On 'Inventive Step', it said that the applicant had studied the cited documents and found them not relevant, and "the matter may be set down to a personal hearing under Section 14, to explain the features of the present invention to the Controller." – No response was filed to objections raised under "Sufficiency of Disclosure", "Definitiveness," or "Other Requirements". – For the formal objections, it said that "The Applicant will be complying with all the above requirements in due course." |
| Follow up | 15 September 2020
The applicant sent a follow-up indicating that further inputs from the IPO were awaited, and if formal or technical requirements were still to be met, a hearing notice be issued. |
| Hearing notice | 3 October 2021
The Controller's hearing notice listed a single objection, that while the detailed FER included objections on inventive step and reference numerals in the claims, the applicant had submitted mere declarations asserting novelty and inventiveness; such a submission could not be taken on record under Section 21(1), and the applicant was asked to provide reasons as to why the application should not be deemed abandoned under the provision. |
| Written submissions | In the written submissions filed in response to the hearing notice, the applicant provided detailed comments on each of the cited documents, and also carried out amendments to the claims and specification. Detailed comments were also provided for each of the objections raised in the FER. |
| IPO Order | 16 September 2021
An order under Section 21(1) was issued, refusing the grant of the patent. It noted the following: – As the applicant had not attempted to reply to each objection on a one-to-one basis, therefore, it had failed to comply with objections raised in the FER within the prescribed time under Section 21(1) read with Rule 24-B (5). – An unconcerned written submission was an attempt to circumvent Rule 24-B(5). The Controller had no power to extend the timeline under rule 24-B(5) and there were no extraordinary circumstances. – Allowing such a practice would circumvent Section 21(1) and Rule 24-B(5), potentially short-circuiting these time-bound provisions. |
The appeal
The aggrieved patent applicant appealed against the Controller's order before the Bombay High Court, invoking Section 117A of the Act. However, Section 117A allows appeals only for orders issued under certain provisions, Section 21 not being one of them.
The IPO, being the Respondent, argued that the appeal was not maintainable under Section 117A because Section 21(1) was not included in its purview.
The patent applicant, being the Appellant, said that they had responded to all the requirements of FER in time, and had also followed up with a letter, asking the IPO to either grant the patent or issue a hearing notice. Thus, since the requirements in the FER were addressed, they could not be said to have abandoned their application under Section 21(1). If the IPO was not satisfied with their response, an order under Section 15 should have been issued.
The High Court decision
The Court identified two issues:
- Is Section 21(1) applicable?, and
- Was the order passed under Section 21(1) or Section 15?
The Court was clear that the order in question was issued under Section 21(1). It held that since the applicant had not complied with the requirements of the FER within the time prescribed, Section 21(1) would be applicable, and thus, the Order had been correctly passed under that provision.
The appellant-applicant had relied on previous decisions to support its arguments, including in Merck Serono S.A. vs. Union of India (MANU/DE/2440/2014), Telefonaktiebolaget LM Ericsson (PUBL) vs. Union of India (UOI) and Ors. (MANU/DE/0683/2010) andFerid Allani vs. Union of India (UOI) and Ors. (MANU/DE/2762/2008). However, the Court did not find them relevant. It noted that these cases essentially establish that if all requirements under the Act are complied with, the condition for deemed abandonment under Section 21(1) would not exist. The Court also said that compliance is key, and whether the explanations (provided in response to FER, etc) have substantive merit is a separate question. Thus, the Court said, "If the requirements are complied with, or, in other words, if the objections in the FER are responded to, then the case would not fall under Section 21(1) of the Patents Act."
In the present case, the Court observed that all the objections in the FER had not been dealt with; instead, the applicant had cursorily addressed one of the objections, and remained silent on the others. The Court was satisfied that the Controller had deemed the application abandoned for reason of this partial / incomplete response, and no further technical examination was required. Thus, according to the Court, the order in question was an order under Section 21(1) and not Section 15.
The Court, therefore, dismissed the appeal as being non-maintainable under Section 117A.
Conclusion
It is clear that neither the IPO nor the Courts will approve of applicants trying to take shortcuts to bypass the provisions of the Patent Act.
This is speculative, but in the present case, it would seem that that the applicant had run out of time to respond to the FER, and rather than file a request for extension, a stopgap response was filed. Technically, a response to the FER had been filed. But the response was substantially inadequate, and could not even be considered an attempt to address the objections raised in the FER.
Perhaps this approach had worked in some other cases in the past. But going forward, in view of this judgment, such a strategy is not likely to work. Thus, patent applicants must be careful and diligent while responding to an FER, and ensure detailed comments are provided with respect to each objection thus raised.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.