Tetra Technologies Inc vs Union Of India Through Secc & Ors.

Court
Delhi High Court

$~O-30
* IN THE HIGH COURT OF DELHI AT NEW DELHI
# CNR No. DLHC010734102024
+ W.P.(C)-IPD 33/2024
Date of Decision : 06.10.2026
IN THE MATTER OF:

TETRA TECHNOLOGIES, INC.
24955 INTERSTATE,
45 NORTH, THE WOODLANDS
TX 77380, UNITED STATES OF AMERICA
THROUGH RAKHEE JAIN,
PATENT AGENT & POWER OF ATTORNEY HOLDER
HAVING OFFICE AT
1001, VIKRANT TOWER,
4, RAJENDRA PLACE.
NEW DEIHI-110008
.....Petitioner
Through: Mr. Sanjeev Bindal, Advocate.

versus

UNION OF INDIA
REPRESENTED BY ITS SECRETARY,
DEPARTMENT OF INDUSTRIAL POLICY & PROMOTION,
MINISTRY OF COMMERCE AND INDUSTRY
UDYOG BHAWAN, NEW DELHI-1 10001 .... Respondent No. 1

BAUDHIK SAMPADA BHAWAN,
S.M. ROAD, NEAR ANTOP HILL
MUMBAI –400037 ....Respondent No. 2

SH. NR MEENA
SENIOR JOINT CONTROLLER OF PATENTS AND DESIGN
BAUDHIK SAMPADA BHAWAN,
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 1 of 9

PLOT NO.32, SECTOR 14, DWARKA
NEW DELHI-110078 ….Respondent No. 3

Through: Ms. Nidhi Raman, CGSC with Mr.
Rishay Raj, Advocate.

CORAM:
HON’BLE MR. JUSTICE PURUSHAINDRA KUMAR KAURAV

JUDGEMENT

PURUSHAINDRA KUMAR KAURAV, J. (ORAL)
1. The instant writ petition has been filed under Articles 226 and 227 of
the Constitution of India. It challenges the respondents‟ decision to treat the
petitioner‟s Indian Patent Application No. 202017019804 as deemed to have
been abandoned under Section 21(1) of the Patents Act, 1970 („the Act‟).
The petitioner seeks a direction for the revival and further examination of
the said application.

2. Briefly stated, the subject application is the national phase entry of
International Application No. PCT/US2018/057202. It was filed on
11.05.2020 through the petitioner‟s patent agent, M/s Jain & Partners. In
Form 1, the petitioner furnished its address for service, comprising a postal
address at New Delhi and the e-mail address „ [email protected] ‟.
The application was published on 14.08.2020. Upon the filing of the request
for examination in Form 18, the respondents claim to have issued the First
Examination Report [FER] on 28.10.2021.
3. Learned counsel appearing on behalf of the petitioner submits that the
application has been treated as abandoned on account of non-filing of the
reply to the FER. On 28.10.2021, the respondents seem to have sent the FER
by e-mail. According to their record, it was not replied to within six months,
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 2 of 9

and therefore, the decision to treat the petitioner‟s application as abandoned
has been taken. It is his case that the purported e-mail has never been
received by the petitioner or its patent agent.
4. It is further submitted that the petitioner learnt of the abandonment
only on 25.04.2023, upon checking the status of the application on the
official portal. From 25.04.2023 to 08.11.2023, the patent agent addressed
several e-mails to the officials of respondent No. 3, which were met with the
stock reply that the FER had been „successfully sent‟. The grievance was
also raised in the Open House sessions of January and February, 2024.
Thereafter, a petition in Form 30 was filed on 05.03.2024, which remains
undecided.
5. The said position has been disputed by learned counsel appearing on
behalf of the respondents. It is submitted that as per Rule 24B(5) of the
Patents Rules, 2003 („the Rules‟), the time for putting an application in order
for grant under Section 21 of the Act is six months from the date on which
the first statement of objections is issued to the applicant. The said period
may be extended by three months under Rule 24B(6), on a request in Form 4
made before its expiry. Rule 138 excludes any further extension.
6. It is contended that, as per the database of the IT Division, the FER
was transmitted on 28.10.2021, under Mail Reference PATEXAMFER-
367766, to the e-mail address furnished by the petitioner in its application.
Such electronic transmission is a permissible mode of communication under
Rule 6(3) of the Rules. Since no reply was received within the stipulated
period, the application came to be treated as abandoned. Reliance is placed
upon an internal e-mail of the IT Division dated 11.05.2023 in support of the
said dispatch.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 3 of 9

7. Learned counsel has further explained that during the Covid-19
period, i.e., 15.03.2020 to 28.02.2022, the respondents‟ office did not effect
any suo motu abandonment. Therefore, the application of the petitioner was
treated as abandoned on 29.12.2022. Placing reliance on The European
Union represented by the European Commission v. Union of India &
1
Ors. , and Telefonaktiebolaget LM Ericsson (Publ) v. Union of India &
2
Ors. , particularly paragraph 14 thereof, it is contended that no interference
is called for, since the respondents have adhered to the applicable Rules.

8. I have heard the learned counsel appearing for the parties and have
perused the record.
9. Before adverting to the rival contentions, it would be apposite to refer
to Section 21(1) of the Act, which reads as under:
“ 21. Time for putting application in order for grant.—(1) An
application for a patent shall be deemed to have been
abandoned unless, within such period as may be prescribed, the
applicant has complied with all the requirements imposed on
him by or under this Act, whether in connection with the
complete specification or otherwise in relation to the
application from the date on which the first statement of
objections to the application or complete specification or other
documents related thereto is forwarded to the applicant by the
Controller…….. ”
10. Rule 5 of the Rules, which requires furnishing of an address for
service, is also relevant. The same is extracted as under:
“ 5. Address for service. – [Every person, concerned in any
proceedings to which the Act or these rules relate and every
patentee, shall furnish to the Controller an address for service,
including a postal address in India and an e-mail address, and

1
2022:DHC:2301
2
2010:DHC:1425
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 4 of 9

such address for service shall be treated for all purposes
connected with such proceedings or patent as the address of the
person concerned in the proceedings or of the patentee. Unless
such an address for service is given, the Controller shall be
under no obligation either to proceed or deal with any
proceeding, or patent or to send any notice that may be
required to be given under the Act or these rules and the
Controller may take suo motu decision in the matter:
Provided that a patent agent shall also be required to furnish to
the Controller a mobile number registered in India]. ”
11. A bare perusal of Section 21(1) of the Act shows that the period for
putting an application in order for grant runs from the date on which the first
statement of objections is forwarded to the applicant by the Controller. The
deemed abandonment contemplated thereunder is, thus, founded upon the
FER having been effectively communicated to the applicant at its address
for service. It is trite that legal fictions are created only for some definite
purpose, and that a legal fiction is to be limited to the purpose for which it
was created and should not be extended beyond that legitimate field, as held
3
in Bengal Immunity Co. Ltd. v. State of Bihar .
12. In Telefonaktiebolaget LM Ericsson (supra), this Court, following
4
Ferid Allani v. Union of India , observed that “abandonment” requires a
conscious act on the part of the applicant manifesting an intention to
abandon the application. Since the applicant therein had responded to the
objections within time, the Court held that the basic factual condition for
attracting the deemed fiction of “abandonment” in terms of Section 21(1) of
the Act, was non-existent. In the considered opinion of this Court, the said
principle applies with greater force where the very receipt of the FER is in

3
AIR 1955 SC 661
4
2008 (37) PTC 448 (Del.)
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 5 of 9

serious doubt.
13. Insofar as the respondents have placed reliance on paragraph 14 of
Telefonaktiebolaget LM Ericsson (supra), it is noted that the said paragraph
holds an application to be deemed abandoned only where, in response to an
examination report, the applicant does nothing within the stipulated time and
does not seek an extension of time. The said observation itself presupposes
that the examination report has reached the applicant. It cannot, therefore,
come to the aid of the respondents where the receipt of the FER is itself in
serious doubt.
14. Rule 5 of the Rules obliges every applicant to furnish both a postal
address in India and an e-mail address for service. Rule 6(3) no doubt
permits communication by “electronic transmission duly authenticated”, and
Rule 6(4) treats the date of dispatch as the date of the communication.
However, Rule 6(5) itself recognises that a communication sent by the
patent office may be delayed in reaching the party, and empowers the
Controller to condone the consequential delay. The scheme, therefore, does
not treat mere dispatch as conclusive of actual receipt.
15. It is not the case of the respondents that the petitioner‟s postal address
in India was not available. The petitioner had duly furnished the postal
address along with the e-mail address in Form 1. The petitioner has also
brought on record screenshots of the inbox of the said e-mail account for the
period from 23.10.2021 to 30.10.2021. These indicate that the e-mail
purported to have been sent by the respondents was not received. In the
absence of any proof of delivery of the said e-mail, there is no reason to
doubt the position taken by the petitioner.
16. The material relied upon by the respondents shows that a system-
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 6 of 9

generated e-mail was dispatched. That e-mail merely intimates the issuance
of the examination report and with a link to INPASS and to the official
document. Notably, it carries a disclaimer that the information is “under
testing” and “not valid for any legal proceedings under the Patents Act
1970”. Such an intimation, without more, cannot be the sole basis for
visiting the applicant with the drastic consequence of abandonment.
17. Even otherwise, nothing prevented the respondents from sending the
FER to the postal address as well, or from re-communicating it once the
petitioner raised a specific grievance of non-receipt. In Saurav Chaudhary
5
v. Union of India & Anr . , the FER had reached the patent agent but had not
been conveyed to the applicant. This Court held there that the mere fact that
the FER would be uploaded on the website may not be sufficient to hold that
the Petitioner had notice of the FER. The said reasoning applies with greater
force where the FER is not shown to have reached even the address for
service.
18. Rule 24B(6) of the Rules itself provides for an extension of three
months. This underscores that the scheme envisages a meaningful
opportunity for the applicant to meet the objections raised. The decision on a
patent application has to be taken after adhering to the principles of natural
justice, as is also reflected in Section 80 of the Act and Rule 129 of the
6
Rules. In Uma Nath Pandey v. State of U.P. , the Supreme Court, quoting
7
Canara Bank v. V.K. Awasthy , held that notice is the first limb of the audi
alteram partem rule. It further held that, in the absence of such notice and

5
2024:DHC:4946
6
(2009) 12 SCC 40
7
(2005) 6 SCC 321

Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 7 of 9

reasonable opportunity, the order passed becomes wholly vitiated.
19. It is also seen that the petition filed on 05.03.2024, though styled
under Rule 6(6) of the Rules, specifically raised the plea of non-receipt of
the FER and sought its re-issuance. The record does not indicate that the
same was ever considered or decided, or that any opportunity of hearing was
afforded to the petitioner. The repeated grievances of the petitioner were met
only with stock replies, including that “a duplicate FER cannot be issued in
this case”.

20. The petitioner entered the national phase within time, filed its request
for examination, and pursued the matter persistently upon learning of the
abandonment. Such conduct is wholly inconsistent with any intention to
abandon. In The European Union (supra), this Court held that courts
exercising writ jurisdiction may, in rare cases, permit the application to be
put in order after examining the factual matrix to see as to whether the
applicant in fact intended to abandon the patent or not. This Court is
conscious of the caution sounded therein. However, the instant case turns
not merely on the condonation of a lapse, but on the absence of effective
communication of the FER itself.
21. In the instant case, the application has been treated as abandoned only
on account of non-filing of the reply by the petitioner. When the service of
the FER itself is doubted, the impugned decision would not sustain. The
Court, therefore, deems it appropriate to set aside the decision treating the
subject application as deemed to have been abandoned, and to direct its
revival on the records of the respondents.
22. The respondents shall furnish a copy of the FER dated 28.10.2021 to
the petitioner‟s patent agent or at such other address as may be intimated by
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 8 of 9

the petitioner, at both the postal and the e-mail address for service, within
one week from today. The petitioner is granted eight weeks‟ time from today
to file the reply to the FER. If the petitioner does so, let the application of
the petitioner be taken to its logical conclusion with due expedition and in
accordance with the Act and the Rules.
23. It is clarified that this Court has not expressed any opinion on the
merits of the subject application. The directions hereinabove have been
issued in the peculiar facts and circumstances of the present case.

24. Accordingly, the petition stands disposed of, along with pending
application(s), if any.


PURUSHAINDRA KUMAR KAURAV, J
OCTOBER 6, 2026 / tr/sa
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:NEHA CHOPRA
Signing Date:17.10.2026
12:37:33
W.P.(C)-IPD 33/2024 Page 9 of 9