India: Missed The Deadline Will Kill Your Patent

Last Updated: 5 June 2017
Article by Aayush Sharma

Most Read Contributor in India, December 2018

Time and again it has been notified by the Patent Office that deadlines are to be followed on a strict note. And missing deadlines can make applicant lose rights on their Patent Application, unless the reason behind missing the deadline is capable of convincing the Controller of Patents.

In recent well reasoned decisions by the Controller, two PCT National Phase Applications filed after the time limit of 31 months from the Priority date, have lost their existence as valid Patent Applications to be processed under Indian Patent Office.

Patent Act 1970 and Patent Rules 2003, specifically says 'deemed to be withdrawn' (on intentional note by applicants) in cases where a request for examination is not filed within the time period of 48 months from priority and in case of not filing PCT National Phase Application within the prescribed time limit of 31 months from priority date.

The details of the cases for recent decision of Controller are as below:

Case 1: Application no. 1494/DELNP/2010 dated 4th March, 2010 filed by Information in Place, Inc. USA, based on PCT Application no. PCT/US2008/069688 dated 10th July, 2008, claiming priority date of US application no. 60/948924 dated 10th July, 2007, was required to be filed before the due date of 10th February, 2010, as the prescribed time limit of 31 months from priority date under rule 20(4) of Patent Rules 2003. The same was filed after expiration of 31 months through online electronic system of the Patent Office along with a request for restoration of right of Priority after expiry of the prescribed period of 31 months under rule 20 (4) of the Patent Rules 2003. Further agents of the applicants filed two petitions, one under rule 137 and rule 138 for condonation of delay in effecting the national phase entry under rule 20(4) on the ground of docketing error in the docketing management system maintained by the office of US attorney.

Thereafter on 13th July, 2011, one more petition was filed under rule 137 for condonation of delay beyond the prescribed period of 48 months for filing the request for examination (RFE). In order to consider the requests of the agent for applicant, a hearing was fixed on 1st August, 2011.

Submissions for applicant were as below:

Reference was made by agents, for Nokia Corporation vs Controller of Patents, to consider their petition under rule 138 for extension of one month time even it is filed after expiry of 31 month and therefore requested that their application be taken on record.

It has also been stated by petitioner that PCT Article 48 and Rule 82bis deals with the delay in meeting certain time limits. Also according to Rule 23 of the Patent Rules 2003, the requirement under chapter will be supplemental to the regulations etc under the Treaty.

Legal situation:

Article 22(3) of PCT provides that any national law may fix time limits which expire later than the time limit provided for in those paragraphs. Accordingly under this provision, India has already fixed the time limits of 31 months (beyond 30 months) under rule 20(4) to file the national phase application failing which the application shall be deemed to be withdrawn under Rule 22 of the Patents Rules, 2003 which provides that an international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirement of rule 20.

Article48 of PCT deals with delay in meeting the certain time limits under PCT procedure. Paragraph (1) deals with the delay caused due to interruption in the mail service or unavoidable loss or delay in the mail. Paragraph (2) (a) provides that any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit (that is due to interruption in the mail service.

In order to meet the obligation of paragraph 48(2) (a) of the PCT, rule 6(5) of the Patent Rules 2003 provides for the provisions to condone the delay occurred due to postal services or mail services which can be condoned by the controller.

Under Rule 137, any document for the amendments of which no special provision is made in the Act may be amended and any irregularity in the procedure which in the opinion of the Controller, may be obviated without detriment to the interest of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct. Therefore, the provisions are discretionary in nature and applicable only when the correction of the irregularity is not detrimental to the interest of any person. Further, the provisions are applicable to the amendment for which no provision is made in the Act. (Order of Hon'ble High Court of Delhi dated 8th February 2011 in Nippon Steel Corporation vs Union Of India) and therefore are not meant for condonation of delay in filing the national phase application after the expiry of the prescribed time limit

The rule 138 of the Patents Rule provides the power to the controller for extension of time beyond prescribed time limit provided the request for extension is made before expiry of prescribed period of time.

The Controller also cited various other PCT Rules which were not applicable to India as India had notified WIPO about its reservations regarding these specific rules. The rules include 49.6, 49(f), 49ter(1)(g), which deals with the reinstatement of Priority Rights.

Decision: It was decided that said application cannot be taken on record for further processing under the Patents Act 1970 and Patent Rules 2003 since same has become deemed withdrawn under rule 22 of the Patents Rules 2003 for non-compliance of requirements under rule 20.

Further that petitions filed under rule 137 and 138 are also not allowable and accordingly the petitions filed for condonation of the delay and extension of time for filing the National Phase application beyond the prescribed period and also the petition for condonation of the delay in filing the request for examination beyond the statutory as prescribed were disposed of.

Case 2: Application no. 5402/DELNP/2010 dated 13th July, 2011 filed by Abbott Laboratories, USA, based on PCT Application no. PCT/US2009/049954 dated 08th July, 2009, claiming priority date of US application no. 61/134,284 dated 08th July, 2008 and US 61/191711 dated 11th September, 2008, was required to be filed before the due date of 08th February, 2011, as the prescribed time limit of 31 months from priority date under rule 20(4) of Patent Rules 2003. The same was filed along with a request on a petition for restoration of right of Priority after expiry of the prescribed period of 31 months under rule 20 (4) of the Patent Rules 2003. Further agents of the applicants filed two petitions, one under rule 137 and rule 138 for condoning the delay in effecting the national phase entry under rule 20(4).

The reason as submitted under petition was server problem which could not receive mails of size beyond 10MB, due to which instruction email was not received by the agents in India.

Similar submissions and explanations by both parties (Agents and Controller) were discussed in this case as in case 1. It was decided that application cannot be taken on records and Petitions filed under rule 137 and 138 are not allowable.


The best way to protect applicant's rights is to abide by the rules and regulations and take due consideration of the deadlines. Not relying on single source of check on due dates, can be more helpful with deadlines. There can be certain unavoidable and unintentional situations for missing the deadlines, and same shall be properly validated.  

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.

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