India: Deemed Abandonment Under Scrutiny

Last Updated: 13 May 2011
Article by Sonam Lhamu Bhutia

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 was pleaded.

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 Patent Rules.

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 heard.

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