Madras High Court
Represented By The Authorised ... vs Government Of India on 20 March, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
W.P.(IPD)No.2 of 2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 20.03.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P.(IPD)No.2 of 2025
and W.M.P.(IPD)No.1 of 2025
AMST – SYSTEMTECHNIK GMBH
Lamprechtshausener-Strasse 63,
5282 Ranshofen, Austria.
Represented by the Authorised Signatory
Mr.S.Anadan, De Penning & De Penning,
120, Velacherry Main Road, Guindy,
Chennai – 600 032. ... Petitioner
-vs-
1. Government of India,
Ministry of Commerce & Industry,
The Patent Office,
Intellectual Property Building,
S.M.Road, Near Antop Hill Post Office,
Antop Hill, Mumbai-400 037.
2. The Controller General of Patents & Designs,
Patent Office, Intellectual Property Building,
GST Road, Guindy,
Chennai-600 032.
1/12
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W.P.(IPD)No.2 of 2025
3. Deputy Controller of Patents & Designs,
Patent Office, Intellectual Property Building,
G.S.T. Road, Guindy, Chennai- 600 032. .. Respondents
Prayer: Writ Petition (IPD) filed under Article 226 of the Constitution of
India for issuance of Writ of Certiorarified Mandamus to call for the records
relating to the order dated 21.12.2023 in Patent Application
No.3022/CHENP/2011/2269 passed by the 3rd respondent and quash the
same as illegal and consequently direct the respondents to take the
petitioner's request for examination on record and proceed further with the
Patent Application No. 3022/CHENP/2011 filed by the petitioner in
accordance with law.
For Petitioner : Mr.S.Shivathanu Mohan
for M/s.S.Ramasubramaniam and Associates
For Respondents : Mr.K.Subbu Ranga Bharathi, CGSC
ORDER
By this writ petition, the petitioner assails order dated 21.12.2023
rejecting Patent Application No.3022/CHENP/2011 as withdrawn under
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Section 11-B(4) of the Patents Act, 1970 (the Patents Act).
2. The petitioner filed PCT application bearing
No.PCT/EP/09/007174 claiming priority from 09.10.2008. The above
mentioned Indian patent application was the national phase application
derived from the PCT application. Such application was filed on
03.05.2011, and did not specify a priority date. On 12.09.2013, the
petitioner, through its agent, made a request for examination. The said
request for examination did not elicit a reply. After several years, on
26.09.2022, the petitioner informed the respondent that the request for
examination was not responded to and that the First Examination Report
(FER) was not received by the petitioner. The respondent was, therefore,
requested to issue the FER. In response, by e-mail of 17.08.2022, the
respondent stated that the e-mail has been forwarded to the examination unit
(Examiner and Controller). Eventually, impugned order dated 21.12.2023
was issued holding that the patent application was treated as withdrawn.
3. Learned counsel for the petitioner referred to the above sequence
of dates and events. He submits that the request for examination is within
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the 48 month period, if reckoned from the date of filing the national phase
application. If reckoned from the priority date specified in the PCT
application, he submits that the request is beyond the 48 month limit
prescribed in Rule 24B of the Patents Rules, 2003. By referring to a
judgment of this Court in Chandra Sekar v. The Controller of Patents and
Designs and another, order dated 04.11.2022 in W.P.Nos.12620 and 12621
of 2017 (Chandra Sekar), learned counsel submits that in substantially
similar facts and circumstances, this Court concluded that the patent
application cannot be treated as withdrawn. Learned counsel places reliance
on paragraphs 14, 17 and 18 of the said judgment. He also relies on the
judgment of this Court in France Telecom v. Union of India and 2 others,
order dated 30.10.2024 in W.P.No.4958 of 2012 (France Telecom), where
the judgment in Chandra Sekar was followed.
4. In reply, learned counsel for the respondents submits that Section
11-B(4) prescribes that the application for grant of patent shall be treated as
withdrawn by such applicant, if the applicant does not make a request for
examination within the period prescribed under the Rules. By referring to
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Rule 24B, she submits that the prescribed period is 48 months from the
priority date of the application or from the date of filing of the application,
whichever is earlier. In this case, the priority date being 09.10.2008, she
submits that the request for examination dated 12.09.2013 is beyond the
prescribed period of 48 months from the priority date. Consequently, it is
submitted that no interference is warranted.
5. Section 11-B of the Patents Act is as under:
“11-B. Request for examination.— (1) No
application for a patent shall be examined unless the
applicant or any other interested person makes a request
in the prescribed manner for such examination within the
prescribed period.
(2) Omitted by the Patents (Amendment) Act, 2005
(3) In case of an application in respect of a claim
for a patent filed under sub-section (2) of section 5 before
the 1st day of January, 2005 a request for its examination
shall be made in the prescribed manner and within the
prescribed period by the applicant or any other interested
person.
(4) In case the applicant or any other interested
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person does not make a request for examination of the
application for a patent within the period as specified
under sub-section (1) or sub-section (3), the application
shall be treated as withdrawn by the applicant:
Provided that—
(i) the applicant may, at any time after filing the
application but before the grant of a patent, withdraw the
application by making a request in the prescribed
manner; and
(ii) in a case where secrecy direction has been
issued under section 35, the request for examination may
be made within the prescribed period from the date of
revocation of the secrecy direction. ”
Sub-section (4) stipulates that the application for grant of patent shall be
treated as withdrawn by the applicant, if the applicant or any other
interested person does not make a request for examination of the application
within the period prescribed in the Rules. The above provision has been
amended on more than one occasion. The relevant rule prescribing the time
limit is Rule 24B. Rule 24B earlier prescribed a time limit of 48 months
from the date of priority of the application or from the date of filing of the
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application, whichever is earlier. By Patent (Amendment) Rules, 2024, the
48 month period was replaced by 31 months. Nevertheless, clause (vi) of
sub-rule (1) of Rule 24B clarifies that the amendment would not apply to
applications filed before the commencement of the Patent (Amendment)
Rules, 2024. Therefore, as regards the application filed on 03.05.2011, the
period of 48 months continues to apply.
6. The documents on record disclose that the national phase
application was filed on 03.05.2011, and that no priority date was
mentioned therein. If the 48 month period had been computed from the date
of filing of the application, which is one of the factors specified in Rule
24B, the request for examination dated 12.09.2013 would have been within
time. Rule 24B, however, prescribes that the priority date is the other factor
and that the 48 month period should be computed from the earlier of the two
dates. The priority date, in the present case, is 09.10.2008. If calculated
from this date, the 48 month period had elapsed even before the request for
examination was submitted.
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7. Section 11-B incorporates a legal fiction by which the application
is treated as withdrawn by the applicant, if the request for examination is
not made within the prescribed period. The settled legal position is that a
legal fiction is intended to fulfil a specific purpose and that it should not be
interpreted expansively so as to extend its application beyond such object
and purpose.
8. The documents on record disclose that the petitioner/patent
applicant requested for the examination of the application on 12.09.2013.
This request did not elicit a response for about 9 years. After waiting for the
FER for the said period, by communication dated 26.09.2022, the petitioner
requested for the FER. Only thereafter, by e-mail of 17.08.2022, the Patent
Office informed the petitioner that the e-mail was being forwarded to the
examination unit. The impugned order was issued thereafter on 21.12.2023,
i.e. about 15 months later. The present writ petition warrants consideration
by keeping these facts and circumstances in mind.
9. As discussed earlier, the documents on record indicate that the
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petitioner/patent applicant intended to prosecute the patent application and
not withdraw or abandon the same. It bears repetition that in about two
years from the date of lodging the national phase application, the patent
applicant requested for examination. The said request could have been
responded to within a reasonable time by stating that such request was made
beyond the 48 month period, if reckoned from the priority date. The
respondents failed to respond until the petitioner reached out again about
nine years later. In these facts and circumstances, I conclude that the
petitioner did not intend to withdraw the application. Unless the impugned
order is interfered with, the petitioner will not have the opportunity to
prosecute the patent application. Therefore, the interest of justice warrants
that such application be considered on merits. Reference may also be made
to the earlier judgments of this Court in Chandra Sekar and France
Telecom, wherein, in substantially similar facts and circumstances, this
Court directed the Patent Office to consider the relevant patent application
on merits.
10. For reasons set out above, impugned order dated 21.12.2023 is set
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aside and the Patent Office is directed to consider Patent Application
No.3022/CHENP/2011 on merits. In view of the fact that about 16 years
have elapsed from the priority date, the application shall be considered and
disposed of within six months from the date of receipt of a copy of this
order after providing a reasonable opportunity to the petitioner.
11. The writ petition is disposed of on the above terms, without any
order as to costs. Consequently, connected miscellaneous petition is
closed.
20.03.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
To
1. Government of India,
Ministry of Commerce & Industry,
The Patent Office,
Intellectual Property Building,
S.M.Road, Near Antop Hill Post Office,
Antop Hill, Mumbai-400 037.
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2. The Controller General of Patents & Designs,
Patent Office, Intellectual Property Building,
GST Road, Guindy,
Chennai-600 032.
SENTHILKUMAR RAMAMOORTHY,J
kj
3. Deputy Controller of Patents & Designs,
Patent Office, Intellectual Property Building,
G.S.T. Road, Guindy, Chennai- 600 032.
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20.03.2025
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