Abandonment v. Refusal- Delhi High Court clears some air

One question that has time and again haunted patent practitioners/agents is- why an application is deemed to be abandoned under section 21 (1) of the Indian Patent Act, 1970 even when a response to the examination report is filed within the stipulated 12 months from the date of receipt of First Examination Report?

Recently Delhi High Court put this argument to rest in the case of Telefonaktiebolaget LM Ericsson (PUBL) Vs. Union of India (UOI) and Ors decided on 11th March, 2010. The facts of the case are tabulated as under:

29th July 2005- Ericsson filed national phase patent application
1st June 2007- Request for Examination filed
8th October 2007- First Examination report issued and defects pointed out.
10th December 2007- Ericsson replied to the first examination report.
25th July 2008- Another examination report sent by controller restating points already mentioned in first information report.
22nd September 2008- Ericsson filed another reply explaining defects mentioned in second examination report.
10th October 2008- Patent office wrote a letter to the petitioner stating that despite response of the petitioner on 22nd September 2008, the specification of the petitioner was still defective on various grounds and the application was deemed to be abandoned under section 21(1).

Upon receiving abandonment notice Ericsson filed this case in the Delhi High court over the issue of the application abandoned instead of being rejected.

The Delhi High Court observed that if an applicant does nothing by way of a response to an examination report within the allotted time, only then can it be said that the application was deemed to have been abandoned. But if the reply is filed then the Controller should reject the application under section 15 of the Indian Patent Act after complying with section 14 i.e. giving a hearing.

The effect of this decision is going to be a rather important one. Now in case of a final rejection an applicant can file an appeal to the Intellectual Property Appellate Board (IPAB) under section 117A of the Indian Patent Act 1970, while earlier an appeal to the IPAB couldn’t be filed against a decision of abandonment.

Written By:
Nishant Kewalramani
Ajay Randhawa