Section 21 of the Patent Act, 1970 (the Act) provides for time
for putting application in order for grant. A patent application is
deemed to be abandoned unless within the prescribed period the
applicant has complied with all the requirements as mandated by the
statute. This particular provision was called for interpretation in
the writ petition Telefonaktiebolaget LM Ericsson vs. Union of
India & Ors [WP (C) 9126 of 2009] filed by Ericsson
stressing the grievance that despite replying to the objections
raised in both first and second examination reports the Patent
Office thought it fit to have the application "deemed to be
abandoned" under section 21 of the Act instead of giving an
order rejecting the application under section 15 of the Act so as
to enable the same to be eligible to appeal. The present order
under section 21(1) of the Act is not appealable under 117A of the
Act. The second part of the grievance was that the order of the
Patent Office abandoning the application does not deal with the
detailed replies to the objections raised in the examination report
hence a request for an early hearing under section 14 of the Act
The Court thus framed the issue that
whether, in the facts and circumstances of the case the
petitioner/applicant has abandoned its patent application in terms
of section 21(1) of the Act. The Court while reading section 21(1)
said that a collective reading of the same along with section 12
(Examination of Application) of the Act is imperative to show that
that the applicant is required to deal with the objections raised
in the examination report that emerge as a result of the
examination of the application. The meeting of objections
satisfactorily or not is a different matter. The abandonment of the
application under Section 21 takes place only when there is a
failure in compliance with the requirements imposed under the same.
The Court further took to compare and contrast the requirement
under section 15 of the Act (Power of Controller to refuse or
require amended applications, etc., in certain cases), which talks
of the satisfaction of the Controller.
The Court thus allowing the writ
petition held that an application should be "deemed to have
been abandoned" only when there is a manifest intention
requiring a conscious act on the part of the applicant to abandon
the application such as doing nothing by way of meeting the
objections raised within the stipulated time or not seeking
extension of time for that purpose. If there is a reply and it is
found that the same is unsatisfactory then the Controller should
proceed to take a decision under section 15 after complying with
section 14 of the Act. Further there is a duty envisaged in section
14 of the Act on the Controller to give a hearing to an applicant
and also provided for in section 80 of the Act and Rule 129 of the
The applicant herein responded to
each of the objections set out in the Examination report within the
stipulated time thereby fizzling out the basic factual condition
for attracting the deemed fiction of abandonment in terms of
section 21(1) of the Act. The Court was of the opinion that the
Controller of Patent has in effect rejected the application for
patent and such an order is an order relatable to Section 15 of the
Act. Moreover, the rejection of the application has been done
without indicating the reason – why the reply filed by
the petitioner to the objection was not found satisfactory
– and also not explaining the denial of an opportunity of
hearing in terms of section 14 of the Act. An appeal to the said
order also does not fructify as no order was passed under section
15 of the Act.
The Court while setting aside the
order of the Controller held to pass a reasoned order under section
15 of the Act after giving the petitioner an opportunity of being
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).