By Aastha Suri and Tanya Batwani
Introduction
This article relates to a judgement passed by the Hon’ble Bombay High Court on May 6, 2024, in response to a Petition filed by the Applicants, Sonalkumar Sureshrao Salunkhe and Kunal Sureshrao Salunkhe on December 22, 2021, against an order issued by the Assistant Controller in the Patent Application (Application No: 174/MUM/2015) filed on January 17, 2015, wherein the said application was deemed to be abandoned under Section 21(1).
Brief Overview of the Matter
The Applicants filed a Patent Application (Application No. 174/MUM/2015) with the Indian Patents Office (IPO) on January 17, 2015, and subsequently, First Examination Report (FER) was issued by the Assistant Controller in the said application on June 24, 2019. The Applicants filed the response to the FER on December 24, 2019, and thereafter followed up with the IPO on the response filed by the Applicants. A hearing notice was issued by the Assistant Controller on August 13, 2021, wherein it was stated that a detailed first examination report was sent to the Applicants with objections on inventive step, incorporation of reference numerals in the claims, etc. to which the Applicants submitted mere declarations that the claimed invention is novel and inventive and that the Applicants’ submission cannot be taken on record as per Section 21(1) of the Patents Act, 1970 read with Rule 24B(5) of the Patents Rules. Further, the hearing notice also stated that the Applicants may state the reason under which the said application should not be deemed to be abandoned under Section 21(1) of the Patents Act, 1970. Subsequently, the Applicants filed the written submissions on August 31, 2021, in response to the objections set out in the hearing notice issued by the Assistant Controller. The Assistant Controller abandoned the said patent application and the same was communicated to the Applicants via the order passed by the Assistant Controller on September 16, 2021.
Order passed by the Assistant Controller Abandoning the Patent Application
The Assistant Controller stated the following reasons for abandoning the said patent application.
- Failure at the Applicants’ end to fulfill all the requirements raised in the FER
- No attempt made by the Applicants to respond to each objection separately.
- No request made by the Applicants for extension in the period to comply with the objections under rule 24B(6) of the Patents Rules.
- Unconcerned written submissions filed by the Applicants in response to the FER as an attempt to escape the provision under Rule 24B(5) of the Act
- No observation made regarding extraordinary circumstances, national emergencies, pandemics, warlike situations, etc.
The Assistant Controller further stated that no power lies with the Controller to extend the timeline under Rule 24B(5), and Rule 138 of the Patents Rules. Further, the Assistant Controller also stated that if the prosecution of the said patent application would be allowed, then it may be considered as a way to escape the provisions under Section 21(1) of the Patents Act, 1970 [Rule 24B (5), and Rule 24B(6)], and would also set a dangerous precedent, undermining the integrity of the patent system002C and may potentially result in chaos and misuse of the Patents Rules. Hence, the Controller abandoned the said patent application and refused to proceed with the grant of said patent application[1]
Petition Filed by the Applicants
A petition for appeal under the provisions of Section 117A was filed by the Applicants (herein referred to as Petitioners) with the Hon’ble Bombay High Court against the order passed by the Assistant Controller (herein referred to as Respondent).
Respondent’s Response to the Appeal Filed by the Petitioner
During the court’s proceedings, the Learned Counsel of the Respondent asserted that since Section 117A of the Patents Act does not include any provision to file an Appeal against the order passed under Section 21(1) of the Patents Act, the Petition filed by the Petitioners was non-maintainable as the impugned order was passed by the Respondent under Section 21(1) of the Patents Act. To strengthen the submissions, the Learned Counsel of the Respondent also relied upon the judgment passed by the Hon’ble Delhi High Court presented by the European Commission vs. Union of India & Ors.4 [2]
Petitioner’s Response to the Contentions of the Respondents during the Proceeding
The Learned Counsel of the Petitioners stated that all the requirements in the FER were fulfilled by the Petitioners and referred to a follow-up letter dated September 15, 2020, filed by the Petitioners after filing the FER response. Further, the Learned Counsel of the Petitioners stated that since the Petitioners responded to all the requirements in the FER, the said Patent Application should not have been abandoned under Section 21(1) of the Patents Act. Further, it was stated that if the Assistant Controller was not satisfied with the response filed by the Petitioners, then the Assistant Controller should have passed the order under Section 15 of the Patents Act, which is appealable under Section 117A of the Patents Act, 1970. Therefore, the Learned Counsel asserted that the Appeal filed by the Appellant was maintainable. To strengthen the submissions, the Learned Counsel also relied on the judgments passed by the Hon’ble Delhi High Court in Merck Serono S.A. vs. Union of India[3], Telefonaktiebolaget LM Ericsson (PUBL) vs. Union of India (UOI), and Ors[4] and Ferid Allani vs. Union of India (UOI) and Ors[5].
Judgment Passed by the Hon’ble Bombay High Court
The Hon’ble Court stated that Section 117A of the Patents Act does not provide for an Appeal against the order passed under Section 21 of The Patent Act. The Hon’ble Court concurred with the submission of the Learned Counsel of the Respondent that the order was passed under Section 21(1) of The Patents Act. Further, the Hon’ble Court also stated that no jurisdiction exists to entertain an Appeal against the same filed under the provisions of Section 117A as Section 117A does not provide for an Appeal against the said order. Furthermore, the Hon’ble Court also agreed with the Learned Counsel of the Respondent that the Appellate Court, in this case, may not have the authority to review/reconsider whether the order could alternatively be interpreted as falling under Section 15 of the Patents Act once the order clearly shows that it falls within the provisions of Section 21(1) of the Patents Act. The Hon’ble Court therefore stated that the Appeal was not maintainable.
The Hon’ble Court further asserted that the order was issued under Section 21(1) only because the Petitioners responded only to the objection regarding the inventive step raised in the FER and failed to respond to other objections such as sufficiency of disclosure, definitiveness, and other requirements. Therefore, the order correctly considered the application as abandoned under Section 21(1) of the Act [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][6] and not Section 15 [Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so] [7]as the Petitioners did not meet all the requirements in the FER within the time prescribed.
The Hon’ble court referred to the judgments in Telefonaktiebolaget LM Ericsson vs. Union of India (UOI) and Ors[8], relied upon by the Petitioners to distinguish Section 15 and Section 21(1) of the Patents Act, wherein it was held that the Applicant is required to deal with the objections raised in the reports resulting from the examination of the application. Whether or not the Applicant has complied with the objections up to the satisfaction of the Controller is a separate issue. Concerning Section 21 of the Patents Act, the application shall be deemed to be abandoned by the Applicant only when the Applicant fails to meet all the requirements imposed on him or under this Act. This can be contrasted with Section 15 which talks of the satisfaction of the Controller wherein the Controller, when satisfied, that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so. Further, it was held that when the applicant does not make any efforts to meet the objections raised in the FER within the prescribed time stipulated and does not seek an extension of time for complying with the requirements, then it can be inferred that such an application should be deemed to have been abandoned. However, if the applicants have replied but such a reply is not found to be satisfactory, even after a further opportunity (if any) is given, then the Controller may pass an order under Section 15, after complying with Section 14 of the Act.
The Hon’ble Court referred another judgment in Ferid Allani vs. Union of India[9] wherein it was held that “abandonment” necessitates an intentional action on the part of the Petitioners which would substantiate the intent to abandon the application. That judgment also referred to Section 80 of the Act and Rule 138 of the Patents Rules which provides discretionary powers to the Controller for extending the time to comply with a requirement. In said case, the Petitioners complied with each of the objections raised in the examination report in writing within the time prescribed. Therefore, it cannot be said that it failed to respond to the objections and, therefore did not comply with the requirements imposed on it under the Act. In other words, the basic factual condition for attracting the deemed fiction of “abandonment” in terms of Section 21(1) of the Act, was non-existent in the instant case.
The Hon’ble Court also stated that in Merck Serono S.A. vs. Union of India[10], another judgment upon which the Applicant relied, it was addressed that even if the Petitioners had responded to the FER as well as the Subsequent Examination Report (SER), the application could be abandoned. Further, the Hon’ble Court referred to Section 21(1) of the Patents Act, stating that an application is deemed abandoned if the Applicant fails to comply with requirements within a prescribed period.
Further, the Hon’ble Court, based on the finding of the aforementioned judgements, stated that if the Applicant meets all the requirements imposed on it under the Patents Act, then the “abandonment” of the patent application under Section 21(1) of the Patents Act, will not exist. Further, the Hon’ble Court held that the main requirement to avoid abandonment under Section 21 of the Patents Act is to comply with the requirements raised under the Patents Act. Whether the explanations in the submissions made by the Applicant have any merit is altogether a different question, and will not fall under Section 21(1) of the Patents Act. The Hon’ble Court further stated that the scope of Section 21(1) of the Act is indicated by the expression “abandon”. This was emphasized in aforementioned cases such as Telefonaktiebolaget (supra) and Ferid Allani where it was held that abandonment would require a conscious act on the part of the Applicant, which would indicate that the Applicant no longer wished to pursue their patent.
In the present case, the Hon’ble Court emphasized that the Petitioners failed to comply with all the objections in the FER instead the Petitioners had cursorily addressed one of the objections and remained silent on the others. The Hon’ble Court was satisfied that the Assistant Controller had deemed the application abandoned due to incomplete response, and therefore no further technical examination was required.
The Hon’ble Court concluded by stating there is no provision for an Appeal under Section 117A to challenge the order passed by the Assistant Controller under Section 12(1) and thus the primary objection raised by the Respondent was maintained and hence the Petition was dismissed as being non-maintainable under Section 117A of the Act.
Further, the Hon’ble Court made the following orders:
- The Petition was dismissed as it was non-maintainable under Section 117A of the Patents Act.
- No costs are awarded to any party in this matter.
- The Hon’ble Court did not make any rulings based on the merits of the case, leaving all arguments by the parties open for further consideration[11]
Conclusion
The judgment makes it mandatory for the Applicants to strictly adhere to the provisions of the Patents Act. Any non-compliance with the mandatory provisions of the Patents Act will not be considered by the Indian Patent Office or Hon’ble Court. The Applicants, in the instant case, failed to comply with all the requirements under the FER, which is a mandatory provision of Section 21(1) of the Patents Act nor did the Applicants request for an extension of time to file the response. The Applicants filed an incomplete response to FER, ensuring to meet the deadline to file the response for FER. This judgment will set a new precedent, making it mandatory for the Applicants to take all the necessary steps and care while filing the response to FER, particularly to ensure compliance with all the objections raised in the FER.
[1] https://iprsearch.ipindia.gov.in/PatentSearch/PatentSearch/ViewDocuments
[2] W.P.(C)-IPD 5/2022
[3] W.P.(C) 4157/2012 & CM No. 8637/2012
[4] W.P.(C) No. 9126 of 2009
[5] W.P.(C) 7/2014 & CM APPL. 40736/2019
[6] https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps21.html
[7] https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps15.html
[8] Id AT4
[9] Id AT5
[10] Id AT3
[11] COMMERCIAL MISCELLANEOUS PETITION NO.8 OF 2022