In a recent decision, the Madras High Court has held that a petition for condonation of delay and extension fo time filed within one (1) month of the expiry of the timeline for filing a PCT National Phase application must be considered by Indian Patent Office and decided on merits. The case went to the Madras High Court after the Deputy Controller rejected the condonation petition filed under Rules 137 and 138 of the Patents Rules with respect to a PCT National Phase application. As per Rule 20 of the Patents Rules, a PCT National Phase application must be filed in India within 31 months from the priority date.

In this case, Anand and Anand, an IP Firm headquartered at Delhi filed an application of Nokia 1 week after the deadline of 31 months had passed. As the application was rejected, Nokia filed a petition for condonation of delay under Rules 137 and 138. Rule 138 is provided hereunder for your reference:

“138. Power to extend time prescribed:
(1) Save as otherwise provided in the rules 24, 55 and 80(1-A0, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct. (2) Any request for extension of time made under these rules shall be made before expiry of prescribed period.”

However, the Deputy Controller stated that the said application cannot be entertained by citing Article 48 and Rule 82, which provide immunity only for delay in mail or unavoidable loss or interruption in mail along with Rule 6(5) of Patents Rules. After hearing both the parties, the Court stated that the petition must be entertained and decided on merits.

It stated that under Rule 138, period for submitting the application can be extended by one month, if a good cause is shown by the applicant. The Court pointed out that this Rule is independent of the Rules and Regulations with respect to mail delay. It further stated that a petition for extension may be filed within one (1) month of the expiry of the timeline and that if application is filed within the said time, the patent office must decide the application taking into consideration the facts and circumstances of the case. As the patent office is a quasi-judicial authority, the Court stated that the power under Rule 138 must be exercised after reviewing if the petitioner has sufficient cause.

This decision is a relief for any delay of filing caused due to inadvertent error, accident or any other valid reason. The patent office had till date been very stringent with filing timelines and has not been entertaining petitions for extension even if there was a valid reason. While this strict adherence to timelines is appreciable, it may result in loss of valuable patent rights of applicants, whose application was delayed by a short period of time because of a valid reason. After the court clarified the provisions under Rules 137 and 138, applicants can now file for extension of time by one (1) month after the deadline passes if a valid cause can be shown.

Authored by: Dr. Kalyan 

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