‘Deemed abandonment’ of a patent can happen at various stages of the patent application process, halting its journey to protection. A patent application abandonment leads the invention details to become part of the public domain, allowing third parties to use, make, sell, or distribute the technology without the risk of patent infringement, resulting in the inventor losing exclusive rights to their creation, thereby preventing them from commercially protecting the invention.

The Courts have carved out exceptions with respect to the ‘deemed abandonment’ provisions under Indian Patent law in order to safeguard and protect the rights and interests of patentees and applicants against bona fide mistakes and errors. The courts have consistently upheld these exceptions in several landmark judgments reinforcing the position of applicants seeking protection against accidental abandonment of their patent applications.

The issue of deemed abandonment of patent and the intent of the applicant has been taken into consideration in several cases, including the recent case of Waterotor Energy Technologies Inc. v. Union of India & Anr.[1], wherein a notice of abandonment was set aside and the patent application reinstated by the Delhi High Court after it was found that the First Examination Report (FER) had not been delivered to the applicant on time. The Court relied on its earlier decision in Saurav Chaudhary v. Union of India & Anr[2]., which emphasized that patent prosecution is a technical process requiring proper communication and diligence on the part of Patent Agents. It was observed that failure to adequately convey a FER to the applicant could not be a ground for the applicant to suffer a deemed abandonment of its application. Taking into account the extraordinary circumstances of the case, the Court set aside the abandonment order and directed the Patent Office to update the application status to “pending”. Waterotor was granted four weeks from the status update to file its reply to the FER, which the Patent Office was instructed to consider in accordance with the law.

In India, the legal provisions governing patent abandonment are outlined in the Patents Act of 1970. Section 9(1) of the Act stipulates that an application will be deemed abandoned if a complete specification is not filed within 12 months from the date of the application after the submission of provisional specification. This scenario applies unless the application is a convention application or a Patent Cooperation Treaty (PCT) application. Furthermore, Section 21(1) of the Act elaborates on abandonment due to failure to comply with the prescribed conditions, such as responding to objections raised by the Controller General of Patents. If an applicant does not respond to objections within six months or fails to extend this period by an additional three months, the application will be considered abandoned. These provisions ensure that patent applicants remain diligent in the progression of their applications but also outline the conditions under which an application may be deemed abandoned, potentially limiting the applicant’s rights to the invention.[3]

There have been several instances where High Courts have denied requests for the condonation of delay in the event where applicants have missed the statutory deadlines. [4]One such case is Nippon Steel Corporation v. Union of India (2011)[5], a decision related to delay in filing of Request for Examination (RFE), where it was held, “There is a logic to the time limits set out under the Act. The scheme of the Act and the Rules require time-bound steps to be taken by applicants for the grant of the patent at various stages.” The provisions of the Act and the Rules have to expressly reflect the legislative intent to permit relaxation of time limits, absent which such relaxation cannot be ‘read into’ the provisions by a High Court exercising powers under Article 226 of the Constitution.

However, in the same year the Delhi High Court’s single-judge bench in the case of Telefonaktiebolaget LM Ericsson v. Union of India & Ors.[6], ruled that for an application to be considered abandoned, there must be a conscious act by the petitioner indicating the intention to abandon the application. In this case, the Court was dealing with the petitioner’s patent application that was deemed abandoned under Section 21(1) of the Patents Act. The court also observed that while the Controller may lack the authority to condone the delay in filing a response to the FER under Rule 138, the Courts while exercising its writ jurisdiction under Articles 226 and 227 of the Indian Constitution, in exceptional cases, has the discretion to allow the applicant to rectify the error and reinstate the application.

In the case of Star Scientific Limited v the Controller of Patents and Designs[7], the Controller had issued a refusal order without providing a reasoned analysis for the refusal, stating that objections stated in the FER remain unresolved due to non-attendance of the Petitioner at the hearing. In this case, Star Scientific Limited had responded to the FER issued by the Controller and had amended their claims on time but did not attend a scheduled hearing, citing a financial constraint. The Delhi High Court held that this approach was inappropriate, emphasizing that the mere non-attendance of a hearing should not be equated with an abandonment of the application and mentioned that abandonment requires a conscious act on the part of an applicant, which would manifest their expressed intention to abandon the application and that there can be no presumption of intent. It further highlights the necessity for the Controller to issue a well-reasoned, speaking order when disposing of a patent application based on the merits and submissions on record.[8]

Despite the provisions laid down in Sections 9(1) and 21(1) of the Patents Act, 1970, and the Patent Rules, 2003, which impose rigid timeframes for compliance, the courts have adopted a flexible approach in cases involving deemed abandonment. The courts have consistently scrutinized the applicant’s intent, offering extensions where there is no indication of wilful delay. This judicial stance highlights the courts’ commitment to fairness, ensuring that patent applicants are not unduly penalized for inadvertent delays, and underscores a more pragmatic and applicant-centric interpretation of patent law, balancing statutory requirements with equitable considerations. The current legal framework under the Indian Patent Law, surrounding abandonment does not allow for presumptions about the applicant’s intent, emphasizing the importance of clear, intentional action in upholding fairness within the patent process.[9]

Despite the positive developments in the judicial decisions, there are no explicit legislative provisions addressing this concern, and the recent amendment to the Patent Rules does not adequately resolve the issue. By adopting a more flexible approach to addressing the inadvertent delays from the patent agents, the patent office could significantly ease the process for applicants dealing with unforeseen issues, reducing their burden and ensuring a more efficient and accessible patent system. The recent judicial directive for a Code of Conduct to govern the role and responsibilities of patent agents is a positive step in this direction. However, there remains a lack of clarity in this regard, as no draft Code of Conduct has taken effect yet. If implemented effectively, the Code has the potential to serve as a crucial tool in resolving some of the persistent challenges in patent prosecution.

-Adv. Malavika K

The content on this blog is for informational purposes only and does not constitute

[1] Waterotor Energy Technologies Inc. v. Union of India & Anr., W.P.(C)-IPD 7/2024

[2] Saurav Chaudhary v. Union of India, 2024 SCC OnLine Del 4585

[3] Mansi Tiwari, Can an Abandoned Patent Application be Revived?,https://www.intepat.com/blog/can-an-abandoned-patent-application-be-revived/

[4]  LexOrbis, Missed deadline: Remedy under the Indian Patent Laws, https://www.lexorbis.com/missed-deadline-remedy-under-the-indian-patent-laws/

[5] Nippon Steel Corporation v. Union of India (2011), W.P. (C) 801 of 2011

[6] Telefonaktiebolaget LM Ericsson v. Union of India & Ors [WP (C) 9126 of 2009]

[7] Star Scientific Limited v the Controller of Patents and Designs(COMM.IPD-PAT) 20/2024,

[8] Vidyasaral Murugan, Delhi High Court: Non-Attendance of Hearing Is Not Abandonment, https://kandspartners.com/137193

[9] Supra n.3