[This post is authored by SpicyIP Intern Jyotpreet Kaur. Jyotpreet is a third-year law student who is interested in Intellectual Property Rights and Competition Law and looks to study their interaction with each other.]
Patent Prosecution refers to the process whereby an applicant files an application before the Patent Office for the grant of a patent. This process necessarily consists of several steps to ensure that only ‘patentable’ inventions are granted protection. In a recent order from 8th December, 2023 in the case of Procter and Gamble Company v. Controller of Patents and Designs, the Delhi High Court set aside the order of the Patent Office on the ground of delay in passing the order after the conclusion of oral hearings. To reproduce that part of the order, the Court held, “Though no specific time period has been prescribed for passing of orders after concluding oral hearings, the Patent Office is expected to pass the same within a reasonable period. Such a reasonable period cannot be beyond three to six months in any case, depending on the complexity of the case.”
The Court analysed Sections 14 and 21 of the Patents Act along with Rule 24(B) of the Rules in order to gauge the timelines for patent prosecution. The court observed that on a combined reading of the aforementioned provisions, it could be inferred that the legislature intended the timelines to be strict so as to avoid unnecessary delays in the patent prosecution process.
In the present instance, the Court criticized the delay of 4 years in passing the order after the conclusion of oral hearings, considering perhaps the negative impact such a delay would have on the effective term of the patent. The court also called out the arbitrary action of rejecting the patent application on the next working day after issuing a notice under Section 8(2). On this, the Court clarified that the patent office must grant adequate time for filing a reply against the above notice.
Generally, the timelines in the Patents Act and Rules have been held to be mandatory and not directory, however, in certain circumstances the Controller may grant extensions in adhering to the various timelines. The High Court may, in the exercise of its powers under 226, consider factors like negligence on the part of the parties or the patent agents, and diligence among others while considering requests for condonation of delay.
Apart from these instances where extensions may be granted, the patent prosecution process may get extended on account of other factors. Undue delay in the prosecution of patents can certainly harm the interests of patent applicants. However, the discussion surrounding patent expeditions has for some reason mostly been centered around patent oppositions, without much scrutiny of the other factors involved in the process. Courts have even come down heavily on “fronted” or “frivolous” oppositions. As Sandeep K. Rathod has argued here, adopting this approach is unbalanced because not only has the effectiveness of timely opposition to pharmaceutical applications benefited Indians in the long run, but also there has been little to no data backing this approach. The Delhi High Court’s approach in Natco v. Union of India, is seen as more balanced where the Court recognized the various factors which may be at play in causing delays – ranging from multiple amendments to patent applications to multiple oppositions to these applications. Thus, singling out any one factor for the delays, without data, is something that the Court resisted.
This order comes in the midst of the discussions surrounding patent timelines and delays caused thereof, a part of which has been reproduced above. This order imposes the responsibility on the patent office to pass necessary orders within a reasonable time to expedite the patent prosecution process generally.
