Condonation of delay in filing a reply to FER vis-a-vis Exceptional Circumstances under Patents


Recently, the Delhi High Court, in the case of European Union v. Union of India, WP (C) IPD 5 of 2022, condoned the delay in filing a reply to the First Examination Report (“FER”) and noted that the applicant did not intend to abandon the application. In case the court is persuaded that the patent agent made a mistake and the applicant can demonstrate full diligence, the court should be lenient.

In this case, the Hon’ble Court held that the patent agent’s mistake was comparable to the error of an attorney who represents parties in civil or criminal litigation. This article critically analyses this historic decision and the drastic consequences of abandoning a patent and depriving the applicant of his invention’s exclusivity. The applicant should not be subjected to such a consequence for no fault of their own.

The facts of the case:

According to the current facts, the petitioner initially retained the European Law Firm, FREYLINGE, to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (hereafter, “PCT”) applications before the Indian patent office. In subsequent years, the petitioner contracted with a various European firm, including GEVERS, to handle the application’s processing, prosecution, maintenance, and coordination. The original patent agent was notified through email that the data had been transferred from FREYLINGE to GEVERS. When the first patent agent received the transfer instructions, they acknowledged receipt of those instructions promptly. It is important to note that the Patent Office is responsible for issuing the FER. However, both applications were “deemed to have been abandoned” since the required Reply to the FER was not submitted within the allotted time. After the patent office ignored many emails requesting a hearing, the current Writ Petitions were filed in an attempt to have the order of abandonment annulled.

Issues Involved:

  1. Whether, in the facts and circumstances of the case, the petitioner has abandoned its patent application in terms of section 21(1) of the Patents Act, 1970?
  2. Whether the delay in filing the request for examination can be extended, if the prescribed period as per the Patent Rules, 2003 has lapsed?


In the matter of Universidad Politechnica De Valencia v. Union of India & Ors. the Bombay High Court made a decision respecting the Controller’s discretion to declare an application to be deemed abandoned by reading Sections 21(1) and 80 of the Patents Act, 1970 (“the Act”). In this case, the Bombay High Court’s Division Bench ordered that the petitioners be granted a hearing before their plea was deemed abandoned since the Controllers’ discretionary powers are subject to  fair hearing’s regulations.

In the case of Rubicon Research Pty Ltd. v. The Controller General of Patents & Ors, the Intellectual Property Appellate Board (“IPAB“) took a similar stance. The applicants’ agents neglected to notify them that their patent would be considered abandoned if the renewal fee wasn’t paid within the allotted six months as required by Section 60 of the Act for restoration of patent. After hiring new agents to work on their renewal applications, the applicants attempted to rectify the problem. However, at that point six months had passed, and the application was considered abandoned. After reviewing the evidence, the IPAB reviewed the Controller’s discretionary authority under Rule 137 of the Patent Rules, 2003 (“the Rules”) and concluded that the applicants would be unfairly penalized if their patent was deemed abandoned since the lapse was not due to their manifest purpose. The IPAB reversed the Controller’s ruling, giving the applicants another opportunity to restore patent protection.

Additionally, in 2011, a single-judge bench of the Delhi High Court ruled in Telefonaktiebolaget LM Ericsson v. Union of India & Ors, that for an application to be considered abandoned the petitioner must have engaged in some action that demonstrates their intent to withdraw the application.

An abandoned patent application may be revived by submitting a petition for revival with the United States Trademark and Patent Office (“USTPO“). It is simpler to restore an abandoned application if a petition is submitted as soon as possible following the declaration of abandonment. However, the petitioner must demonstrate that they did not intentionally cause the abandonment. Following the filing of the petition, a fee for revival must also be paid, and the circumstances that prompted the abandonment in the first place must be rectified.

The objective of the Legislature, as expressed in Rule 138 of the Rules, cannot be disregarded by the Controller, nor can the explicit wording of Section 21(1) of the Act, which entails a deemed abandonment in the event of noncompliance with the conditions set by the Act. When exercising writ jurisdiction, the court may consider being flexible only in exceptional circumstances, which would rely on the specifics of each case as to whether condonation should be granted.

The 161st report from the Department Related Parliamentary Standing Committee on Commerce, titled “Review of the Intellectual Property Rights Regime in India,” has noted the significant harm that “deemed abandonment” restrictions inflict on patent applicants-

“The Committee opines that the abandoning of patents, without allowing hearing or petition, may demoralize and discourage patentees in the country to file patents. It recommends the Department that certain flexibility should be incorporated in the Act to make allowance for minor errors and lapses to prevent outright rejection of patents being filed. Hence, a revised petition with penalty or fee may be permitted under the Act for minor or bona fide mistakes committed in the filed patents.”

Furthermore, the case of Ferid Allani v. Union of India was taken into account by the Hon’ble High Court, which stated that while the Controller may not have the authority to extend the deadline but the courts with writ jurisdiction may, in exceptional circumstances, grant the same after examining the factual matrix to determine whether the applicant intended to abandon the patent. The court may consider any extraordinary circumstances, including the patent agent’s carelessness, a docketing mistake, and the applicant’s diligence. However, a scenario that could imply that the applicant intended to abandon the patent, is a lack of follow-up by the applicant. Therefore, the court needs to examine the particular facts of each case’s circumstances.

After reviewing the chronology of the facts and circumstances in the current case, there is no question in the Judge’s decision that the applicant was not careless and was following up on the prosecution of the patent application by taking all the necessary procedures. However, the applicant now bears the burden of abandonment due to circumstances beyond their control.

It should be highlighted that if a patent is abandoned, the effects may be fairly severe, stripping the applicant of all exclusivity for the innovation. As a result, the applicant shouldn’t be subject to such a consequence through no fault of their own. The petitioner’s acts show that they were actively pursuing the application and had no intention to abandon it. Moreover, judicial opinion regarding responses to FER or other deadlines suggest that the court should be lenient in its decision-making if the applicant did not intend to abandon the application and if the court is convinced that the patent agent made a mistake.


The provision under Rule 24B(4)(1) of the Rules was deemed advisory rather than obligatory. The court found that the Controller had the authority to grant a one-month extension, provided that the total extension duration did not exceed three months. The ruling that treated the application as abandoned was found unnecessary and unlawful, and it was overturned so that the petitioner might have a chance to continue the case. The abandonment requires a conscious act on the applicant’s part which would manifest his expressed intention to abandon the application and that there can be no presumption as has been drawn by the respondents in the facts of the instant case.

About Saloni Neema 3 Articles
"Saloni Neema is a law student from Damodaram Sanjivayya National Law University Visakhapatnam. Her area of Interest includes Intellectual Property law, technology law and Competition law. As a young mind, she possesses the patience to acquire new skills. She is an avid reader and often keeps writing on contemporary legal issues. She can be reached at Her LinkedIn profile is :"

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