Delhi High Court: In an appeal filed under Section 117-A, Patents Act, 1970 challenging the order of the Assistant Controller of Patents treating a patent application as deemed withdrawn for failure to comply with statutory timelines prescribed for entering the national phase and filing the Request for Examination (RFE), a Single Judge Bench of Jyoti Singh, J., upheld the impugned order and reiterated that the timelines prescribed under the Patents Act, 1970 and the Patent Rules, 2003 for filing national phase applications and RFEs are mandatory and non-extendable in nature.
The Court held that once a patent application stands deemed withdrawn by operation of law for non-compliance with the prescribed timelines, the applicant cannot subsequently seek amendment of the earliest priority date through Form 13 so as to indirectly revive the application and overcome statutory deadlines. Observing that “what cannot be done directly cannot be done indirectly”, the Court rejected the appellant’s plea to disclaim the earliest priority date nearly 14 years after filing of the application and dismissed the appeal.
Background
The present appeal was filed under Section 117-A, Patents Act, 1970 assailing the order dated 29 October 2024 passed by the respondent whereby Indian Patent Application No. 1015/DELNP/2010 dated 15 February 2010 was treated as deemed withdrawn on the ground that the application was not filed within 31 months from the earliest priority date and that the RFE was not filed within the prescribed period of 48 months. The appellant also seeked a direction to permit amendment of the priority date through Form 13 filed on 28 June 2024.
The appellant had filed the subject application as a national phase application arising out of PCT International Application No. PCT/US2008/058073 dated 24 March 2008. The PCT application claimed priority from three US provisional applications dated 22 March 2007, 20 September 2007 and 20 February 2008 respectively. Thereafter, corresponding national phase applications were filed in multiple jurisdictions including India, where Application No. 1015/DELNP/2010 came to be filed on 15 February 2010. The appellant filed the RFE in Form 18 on 16 September 2011 and subsequently filed Form 13 on 18 March 2017 seeking change in the name and place of business of the appellant.
On 14 March 2018, the Patent Office issued the First Examination Report (FER) raising objections inter alia that: 1) the RFE had not been filed within 48 months from the earliest priority date as mandated under Rule 24-B, Patent Rules, 2003; 2) the earliest priority date of 22 March 2007 had not been disclosed in Form 1; and 3) in view of Section 11-B, Patents Act, 1970, the application was liable to be deemed withdrawn. In response dated 14 September 2018, the appellant contended that while entering the national phase in India, the first priority claim had been disregarded and the timelines for filing the RFE were accordingly computed from the second priority date, rendering the RFE within limitation. The appellant further requested that an opportunity of hearing be granted in the event any discrepancy subsisted.
Subsequently, a hearing notice dated 17 July 2019 was issued. However, according to the appellant, the erstwhile patent agent did not receive the hearing notice and consequently failed to appear before the Patent Office, leading to refusal of the application. Representations were thereafter submitted highlighting non-receipt of the hearing notice, pursuant to which an extended hearing notice dated 9 May 2024 was issued fixing the matter for hearing on 14 June 2024.
The appellant thereafter engaged a new patent agent on the ground that the earlier agent had not diligently prosecuted the matter. During the hearing held on 14 June 2024, the newly engaged patent agent appeared and subsequently filed written submissions along with Form 13 on 28 June 2024 seeking voluntary amendment of the claimed priority date. However, by the impugned order, the respondent rejected the request for amendment and held that the application stood deemed withdrawn for failure to file the national phase application within 31 months from the earliest priority date under Rule 20(4)(i), Patent Rules, 2003 and for failure to file the RFE within 48 months from the date of priority or filing date, whichever was earlier, under Rule 24-B(1)(i).
Analysis
The Court observed that the central issue arising for consideration was whether the appellant could be permitted to disclaim and/or amend the earliest priority date of 22 March 2007 and instead rely upon the second priority date of 20 September 2007 so as to extend the statutory timelines for entering the national phase in India and for filing the RFE. The Court noted that under Rule 20(4)(i), Patent Rules, 2003, the national phase application was required to be filed within 31 months from the earliest priority date referred to in Article 2(xi) of the PCT and under Section 11-B read with Rule 24-B, the RFE was required to be filed within 48 months from the earliest priority date or filing date, whichever was earlier.
The Court found that the appellant had admittedly filed the national phase application on 15 February 2010, nearly 4 months beyond the prescribed period reckoned from the first/earliest priority date of 22 March 2007. It was further noted that the earliest priority date was not disclosed in Form 1 and only the second and third priority dates were mentioned. The Court held that the appellant was fully aware of the requirement to disclose the earliest priority date but consciously chose not to do so since relying upon the second priority date strategically extended the timelines for entering the national phase and filing the RFE. The Court observed that there was no disclosure of any intent to disclaim the first priority date at the time of filing the application and the first request seeking disclaimer and amendment of the priority date was made only in 2024 through Form 13, nearly fourteen years later.
Rejecting the appellant’s contention that the omission occurred on account of incorrect legal advice tendered by the erstwhile patent agent, the Court held that even a bona fide mistake could not override mandatory statutory timelines. The Court reiterated that the timelines prescribed for entering the national phase and for filing RFEs are mandatory and non-extendable in nature. Reliance was placed on Rule 22, Patent Rules, 2003 which expressly stipulates that non-compliance with Rule 20 would result in the application being “deemed to be withdrawn”. The Court further observed that Section 11-B(4) similarly provides that failure to file an RFE within the prescribed period would result in the application being treated as withdrawn.
The Court extensively relied upon the decisions in Diebold Self Service Systems v. Union of India, 2022 SCC OnLine Del 4555, Carlos Alberto Perez Lafuente v. Union of India, 2019 SCC OnLine Del 7404 to reiterate that statutory deadlines relating to entry into the national phase and filing of RFEs are incapable of extension and cannot be relaxed through judicial intervention. Referring to the decision in European Union v. Union of India, 2022 SCC OnLine Del 1793, the Court noted that judicial precedents consistently classify timelines for entering the national phase and filing RFEs as “non-extendable deadlines”. The Court further observed that once a patent application is deemed withdrawn by operation of law, the Controller cannot entertain an application for amendment of priority date under Section 57(5) read with Rule 137.
The Court rejected the appellant’s submission that the earliest priority date stood automatically disclaimed merely because it was omitted from Form 1. It held that no formal request or document seeking disclaimer had been filed at the relevant stage and there was “not even a shred of material” placed on record to demonstrate that such disclaimer had been sought contemporaneously. The Court held that permitting amendment of the priority date after 14 years would effectively allow the appellant to indirectly circumvent mandatory statutory deadlines, which is impermissible in law. Emphasising that “what cannot be done directly cannot be done indirectly”, the Court concluded that the impugned order suffered from no infirmity.
Decision
Accordingly, the Court upheld the respondent’s decision treating the patent application as deemed withdrawn for failure to file the national phase application within 31 months from the earliest priority date and for failure to file the RFE within the prescribed period of 48 months. The appeal was consequently dismissed.
Also Read: Patents (Amendment) Rules, 2025
[Neurocentria Inc v. Deputy Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 5 of 2025, decided on 18-5-2026]
Advocates who appeared in this case :
For the Appellant: J. Sai Deepak, Senior Advocate with Manish Aryan, Nishant Rai, Manisha Singh, Abhai Pandey, Avi Garg and Khushi Chauhan, Advocates
For the Respondents: Nidhi Raman, CGSC with Om Ram, Zubin Singh, Nikita Singh and Arnav Mittal, Advocates
