Madras High Court

France Telecom vs Union Of India on 30 October, 2024

                                                                                  W.P..No.4958 of 2012

                                   IN THE HIGH COURT OF JUDICATURE AT MADRAS
                                                        CORAM
                                              DATED : 30.10.2024
                                  THE HONOURABLE MR.JUSTICE K.KUMARESH BABU
                                                  W.P.No.4958 of 2012
                                                  and M.P.No.1 of 2012

                     France Telecom
                     Rep., by its Power of Attorney,
                     Neha Srivastava
                     Place d'Alleray,
                     75015 Paris,
                     France                                      … Petitioner
                                             Vs
                     1.Union of India
                       Rep., by its Secretary,
                       Department of Industry,
                       Ministry of Industry and Commerce,
                       Udyog Bhawan, New Delhi.

                     2.The Controller General of Patents & Designs,
                       The Patent Office,
                       Boudhik Sampada Bhawan,
                       CP-2, Sector V, Salt Lake City Kolkata – 700091.

                     3.Deputy Controller of Patents & Designs,
                       Intellectual Property Rights Building,
                       G.S.T., Road, Guindy,
                       Chennai – 600 032.                      … Respondents


                     PRAYER:-          This Writ Petition has been filed under Article 226 of
                     Constitution of India, to issue a Writ of Certiorarified Mandamus to call for
                     the records of the third respondent pertaining to the subject application and
                     quash the impugned orders dated May 03, 2011 and October 13, 2011 passed
                     by the third respondent in returning the request for examination filed by the
                     petitioner,      and consequently direct the third respondent to take the
https://www.mhc.tn.gov.in/judis
                     petitioner's request for examination of application on record and proceed

                     Page No. 1 of 8
                                                                                         W.P..No.4958 of 2012

                     further with the subject application as per the Act and the procedure
                     prescribed in the Rules.


                                  For Petitioner    :-   Mr.Madhan Babu
                                  For Respondents : Mr.D.Simon CGSC for R1 to R3


                                                               ORDER

The present writ petition has been filed to call for the records of the

third respondent pertaining to the subject application and quash the

impugned orders dated May 03, 2011 and October 13, 2011 passed by the

third respondent in returning the request for examination filed by the

petitioner and consequently direct the third respondent to take the

petitioner's request for examination of application on record and proceed

further with the subject application as per the Act and the procedure

prescribed in the Rules.

2. Heard Mr.Madhan Babu, learned counsel appearing for the

petitioner and Mr.D.Simon, learned Central Government Standing counsel

appearing for the respondents.

3. Mr.Madhan Babu, learned counsel appearing for the petitioner

would submit that the petitioner is a World leading telecommunication

Operator and that it holds patent in various countries in respect of https://www.mhc.tn.gov.in/judis

determination of list of preferred mobile access network. They had made an

application with the second respondent herein for registration of their patent

within the territory of India and that they had made a request for examination

in respect of the identified application. However, the said application was

returned by holding that the period of 48 months had lapsed. Thereafter, a

request to amend priority date had also been made by the petitioner and the

said application was also returned holding that the same was also beyond the

prescribed period. Hence, the petitioner had filed the present Writ Petition

challenging the impugned communication returning the petitioner's

application on the ground that it had been made beyond the prescribed

period. In that context, he would rely upon the judgment of the learned

Single Judge of this Court in W.P.Nos.12620 & 12621 of 2017, dated

04.11.2022 and would submit that the case of the petitioner is squarely

covered by the aforesaid judgment. Further he would submit that the learned

Single Judge in the aforesaid judgment, had held that the facts of the case

would fall under the category of exceptional circumstances and therefore, set

aside the similar orders passed by the respondent therein with direction to

restore the application and proceed in accordance with Acts and Rules. He

would submit that the present facts of the case, also it was due to the error on

the part of the agent, the application could not be filed in time, which would

also fall under the exceptional circumstances and prays this Court to set aside https://www.mhc.tn.gov.in/judis the orders impugned and restore the said application on file and take the

petitioner's request for examination and proceed further with the subject

application as per the provisions of the Act and Rules prescribed thereunder.

4. Mr.D.Simon learned Central Government Standing counsel

appearing on behalf of the respondents on the other hand would contend that

it is an admitted case that the applications have been made by the petitioner

beyond the prescribed period of 48 months and that the statute does not

provide for entertaining such application beyond the period of 48 months.

When that being so, the statute also provides such patent application filed by

the petitioner should be deemed to have been withdrawn under Section

11(b)(4) of the Act. Therefore, he would contend that the application cannot

be entertained and had been rightly returned by the respondent. He would

further submit that the claim of the petitioner that the case would fall under

exceptional circumstances as held by the learned Single Judge in a judgment

relied upon by the petitioner is a fallacy. The petitioner had not been diligent

enough in following up the application that he had filed and when that being

so, the claim of the petitioner cannot be entertained and therefore, he prays

this Court to dismiss the Writ Petition.

5. I have considered the rival submissions made by the learned

counsels appearing on either side and perused the materials available on https://www.mhc.tn.gov.in/judis record.

6. It is an admitted case that the request of the petitioner for

examination had been made beyond the period of 48 months as prescribed

under the Act. The only question that is now to be decided is whether the

judgment of the learned Single Judge relied upon by the petitioner would

apply to the facts and circumstances of this case. The learned Single Judge

in the judgment referred supra, relied upon a judgment of the Delhi High

Court in the case of European Union Represented by the European

Commission vs. Union of India in W.P.(C)-IPD 5 of 2022, dated 31.05.2022

had also referred to the observations of the Parliamentary Standing

Committee on commerce dated 28.07.2021 titled “Review of Intellectual

Property Rights Regime in India” in holding that if there was a bonafide

mistake that had been committed in the filed patents, allowance could be

made. The learned Single Judge taking note of the judgment of the Delhi

High Court as well as the Parliamentary Standing Committee report was of

the view that no delay or fall can be attributed to the petitioner, since the

delay was mainly caused by the Indian agent, who failed to present the

examination diligently. Further, the learned Single Judge had also held that

the valuable statutory rights of the petitioner cannot be completely deprived

of merely because the patent application for examination had not been

diligently presented by the agent. I am in complete acceptance with the view

taken by the learned Single Judge. It is also further to be noted that an https://www.mhc.tn.gov.in/judis invention had been made by the petitioner and if such invention could not be

patented for technical reasons, the petitioner would lose their valuable rights

of protecting their invention. Hence, by applying the principles upon which

the learned Single Judge had held that the error that had been committed by

the Indian agent cannot be put against the petitioner can also be applied to

the present facts of the case, since it is the case of the petitioner that it was an

Indian agent, who had failed to make necessary application for examination,

inspite of the instructions given by the petitioner to its Indian agent.

7. In such view of the matter, I am of the considered view that the

impugned orders dated 03.05.2012 and 13.10.2011 cannot be sustained and

accordingly the impugned orders are set aside. There shall be a further

direction to the second respondent to receive the application of the petitioner

which had been returned by it under the impugned orders and process the