UNINTENTIONAL ABANDONMENT

The Patent laws in India have been designed to act as an incentive for innovation, as well as enable the owner to prevent others from utilizing and selling the invention in question. While examining the benefits, it is important to evaluate the costs of pursuing a patent application and the chances of it getting approved. Such costs are not merely those monetary ones but also include the probability of rejection or abandonment. While the former is often added to the costs, the latter is deemed as a highly improbable event and yet, it happens.

Patent laws in India seek to harmonize with the TRIPS Agreement, along with the rest of the international community and WTO.

The Indian Patent laws and rules seek to prescribe a rigid time frame within which the owner must respond to all correspondence from the Patent Office. If these timelines are not met the Patent is deemed to be abandoned. Section 21 of The Patents Act, 1970 provides for a prescribed time limit for the owner’s response, with a possible time extension (which has to be applied for before the expiry of such prescribed time). Further, Rule 24B (5) of the Patent Rules provides for 6 months as the prescribed time limit, and Rule 138 provides for an extension of time. While this seems to be a fair provision as such, it is prejudicial against those applicants who have been unable to observe the time limit for bonafide reasons.

In Nokia Corporation v. Deputy Controller Of Patents and Designs[1], the Madras High Court examined the issue of filing the application beyond the prescribed time limit. The court adopted a stance favoring the interests of the applicants; seeking to allow an opportunity to those who intend their applications upon their unintentional abandonment. The court noted that the prescribed period under Rule 138(2) must include the one-month extension period.

In another case of Sphaera Pharma, Pte. Ltd. And Anr. v. Union Of India[2], the Delhi High Court took a contrary stance that those who fail to respond to the First Examination Report within the set prescribed time period, cannot have recourse under Rule 138 to condone the delay.

This seems to be a dichotomy between the law and the understanding of the law by the judiciary which has not been dealt with by the legislation effectively. To understand how the interests can be effectively met, the United States Patent Law seeks to balance the options available.

Upon filing the patent application, USPTO sends notices (Office Action) that must be responded to by the individual before the set deadline[3]. Failing to respond leads to the application being deemed to be abandoned. The Manual of the Patent[4] examining procedure provides for procedures for payment of fees to revive applications that have been unintentionally abandoned.

§ 1.137 provides the procedure in cases of unintentional abandonment where the applicant can file an application for reviving an abandoned application or re-examination procedure (abandoned by unintentional delay). A petition fee has been set. The application must contain a statement that the delay was unintentional. The section also provides for a request for reconsideration or review of a decision refusing to revive an abandoned application, even after a petition has been filed for the same. Where there is a question as to whether either the abandonment or the delay in filing a petition under 37 CFR 1.137 was unintentional, the Director may require additional information.

Since the Indian patent law is influenced by the United Kingdom and the United States, the legislators must choose whether to leave the procedural obstacles as they are, or to amend the law to protect the interests of the inventors in the cases of unintentional abandonment.

[1] W.P. No.2057 of 2010 and M.P.No.1 of 2010

[2] W.P.(C) 1469/2018

[3] (§ 1.134 and § 1.136 of Rules of Practice in Patent Case

[4] 35 U.S.C. 27