Neurocentria Inc vs Deputy Controller Of Patents And Designs

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of Decision: 18 May, 2026
+ C.A.(COMM.IPD-PAT) 5/2025
NEUROCENTRIA INC .....Appellant
Through: Mr. J. Sai Deepak, Senior Advocate
with Mr. Manish Aryan, Mr. Nishant Rai, Ms.
Manisha Singh, Mr. Abhai Pandey, Mr. Avi Garg
and Ms. Khushi Chauhan, Advocates.

versus

DEPUTY CONTROLLER OF PATENTS AND DESIGNS
.....Respondent
Through: Ms. Nidhi Raman, CGSC with Mr.
Om Ram, Mr. Zubin Singh, Ms. Nikita Singh and
Mr. Arnav Mittal, Advocates.

CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH

JUDGEMENT
JYOTI SINGH, J.

1. This appeal is filed on behalf of the Appellant under Section 117A of
the Patents Act, 1970 (‘1970 Act’) laying a challenge to order dated
29.10.2024, whereby the Respondent has treated Indian Patent Application
No. 1015/DELNP/2010 dated 15.02.2010 as withdrawn owing to failure to
file the application within 31 months from the first/earliest priority date and
failure to file Request for Examination (RFE) within 48 months from the
first/earliest priority date. Direction is sought to the Respondent to allow
Form-13 filed by the Appellant on 28.06.2024 for amending the priority
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 1 of 42

date.
2. To the extent necessary, the factual matrix is that Appellant filed the
subject application as a National Phase Application of PCT International
Application No. PCT/US2008/058073 filed on 24.03.2008, claiming priority
from US 60/896,458 dated 22.03.2007, US 60/994,902 dated 20.09.2007
and US 61/066,592 dated 20.02.2008. Subsequent to filing of the PCT
application, Appellant filed corresponding National Phase Applications in
various other countries like USA, Great Britain, Japan, EPO, New Zealand
as also in India bearing no. 1015/DELNP/2010 on 15.02.2010. RFE was
filed in Form-18 on 16.09.2011 and on 18.03.2017, Appellant requested for
change of name of the Appellant and its place of business in Form-13.
3. It is stated in the appeal that First Examination Report (FER) was
received by the Appellant on 14.03.2018 raising objections that Appellant:
(a) failed to file Form-18 within 48 months from the date of priority as
required under Rule 24(B) of the Patent Rules, 2003 (‘2003 Rules’); (b) did
not disclose the earliest priority date of 22.03.2007 in Form-1; and (c) under
Section 11(B) of the 1970 Act, there was a prohibition in examining the
application and the same shall be deemed to be withdrawn. Appellant filed
its response to the FER on 14.09.2018 through its First Patent Agent and
submitted that RFE was filed calculating the timelines from the second
priority as the first priority was disregarded while entering the national
phase in India and that taken from the second priority, Form-18 was within
48 months. It was also stated that in case of any discrepancy, personal
hearing under Section 14 be granted. It is stated that first hearing notice was
issued on 17.07.2019 scheduling the hearing on 02.08.2019, however, first
patent agent did not receive the notice and owing to non-appearance, Patent
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 2 of 42

Office refused the application on 05.08.2019. Representations were sent
flagging non-receipt of the hearing notice and extended hearing notice was
issued on 09.05.2024, scheduling the hearing for 14.06.2024.
4. It is stated that Appellant changed the patent agent and engaged the
present patent agent as the erstwhile agent was not diligent in prosecuting
the matter. Second agent attending the hearing on 14.06.2024 and filed
written submissions along with Form-13 on 28.06.2024 for voluntary
amendment of the date of priority claimed in the subject application.
However, vide impugned order, Respondent erroneously refused voluntary
amendment and treated the application as withdrawn owing to failure to file
the application within 31 months from first priority date as required under
Rule 20(4)(i) of 2003 Rules and failure to file RFE within 48 months from
the date of priority of the application or from the date of filing of the
application, whichever is earlier under Rule 24(B)(1)(i).
5. Learned Senior Counsel for the Appellant contended that Respondent
illegally and arbitrarily rejected the request for amendment of earliest
priority date under Section 57(5) of 1970 Act and treated the application as
deemed withdrawn. Appellant filed subject application through National
Phase of its corresponding PCT Application, which had three priority
claims, however, while entering, Appellant disclaimed the earliest priority
US 60/896,458 dated 22.03.2007 and relied upon second priority of US
60/994,902 dated 20.09.2007, which extended the date of RFE from
22.03.2011 to 22.09.2011 and filed Form-18 requesting for examination on
16.09.2011. Respondent, however, held that Appellant changed the priority
claim only to overcome the prescribed timelines provided in Section 11B(1)
of 1970 Act and Rule 24B of 2003 Rules, under which application can be
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 3 of 42

examined only if RFE is filed within 48 months from the earliest date of
priority, failing which the application is deemed withdrawn, completely
overlooking that Section 57(5) of the 1970 Act permits amendment to
disclaim priority claim and amendment cannot be refused only because it
results in extending the prescribed period under the 1970 Act.

6. It was urged that reliance by the Respondent on paragraph 27 of the
judgement in Nippon Steel Corporation v. Union of India, 2011 SCC
OnLine Del 669, was misplaced as the facts of that case were completely
different. Patent applicant in the said case had filed PCT national phase
application within 31 months from the priority date mentioned in the PCT
application, however, due to technical error in agent’s docketing system, the
deadline to file RFE within 48 months from earliest priority date was
missed. When request was made for voluntary amendment, patent
application was already deemed withdrawn and hence, Controller did not
entertain Form-13. In contrast, in the present case, Appellant had disclaimed
the earliest US priority date at the initial filing stage itself and mentioned
only two dates in Form-1 and entered national phase within 31 months from
the original second priority as also filed RFE within 48 months from the said
date. Moreover, when voluntary amendment was sought in 2024, the
application was not deemed withdrawn.
7. It was further argued that Respondent erred in observing that Form-1
filed on 21.08.2011 did not mention any priority details of earliest/first
priority US 60/896,458 dated 22.03.2007 and only disclosed two priorities
i.e., US 60/994,902 dated 20.09.2007 and US 61/066,592 dated 20.02.2008
and therefore, the amendment sought by Form-13 filed on 28.06.2024 was
not an amendment in the said Form on actual basis and was not allowable, in
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 4 of 42

the teeth of the fact that the request made in Form-13 was not for
amendment of Form-1 but for disclaiming the earliest priority claim as: “We
are hereby submitting a request as per section 57(5) for voluntarily
amending the date of priority claimed in the present application by way of
disclaimer, correction and explanation. We request to allow disclaiming the
earliest PCT priority (US 60/896,458 dated 22.03.2007) and consider the
earliest priority claimed (i.e., US 60/994,902 dated 20.09.2007) in the
present application.” . Respondent ought to have allowed the amendment, in
which case the subject application would have fallen within the prescribed
timelines of 31 months and 48 months respectively, from the second priority
date and obviated refusal of grant of patent of an important invention.
8. It was argued that Appellant should not suffer for the fault and
negligence of his patent agent, which is now a settled law. Rule 20(1) of
2003 Rules provides that an application corresponding to an international
application under PCT should be made in Form-1. In the instant case, while
filing Form-1, earliest priority claim was already removed, however, the first
patent agent was negligent and failed to file a request for
amending/removing the claim in Form-13 at the time of filing itself. This
irregularity was corrected subsequently when the second agent filed Form-
13 and a petition under Rule 137 for condoning the irregularity, but the
request was arbitrarily rejected by the Respondent. Appellant has always
been serious and diligent in prosecuting its patent applications. Appellant is
based in State of California, USA and has no option but to rely on Indian
Patent Agents for timely filing of applications, replies, objections and/or
addressing any irregularities in procedures. As soon as Appellant learnt of
the objection raised in the extended hearing notice and negligence of the
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 5 of 42

first agent came to light, it changed the agent and took remedial measures
and cannot be faulted.
9. It was strenuously argued that Appellant had given timely instructions
for disclaiming the first date and ought not be made to suffer irrevocable
loss of substantial patent right over its invention. Patent is an important right
and impugned order has deprived the Appellant of its right to enjoy the fruits
of the skill, hard work and labour invested over years. Keeping this in
backdrop, this Court in European Union Represented by the European
Commission v. Union of India and Others, 2022 SCC OnLine Del 1793,
observed that where no fault can be attributed to the applicant and
negligence is found on the part of the patent agent, applicant ought not to
suffer, as the consequences of patent being abandoned are extreme. In Bry-
Air Prokon Sagl and Others v. Union of India and Another, 2022 SCC
OnLine Del 5197, Court extended the deadline to file response to FER,
which was not filed within the prescribed timelines due to an error and
negligence of the patent agent. Bry-Air (Asia) Pvt. Ltd. v. Union of India,
Through its Secretary, Department for Promotion of Industry and Internal
Trade, Ministry of Commerce and Industry and Another, 2024 SCC
OnLine Del 6956, was a case wherein on examining the facts and record of
the case, Court found that Petitioner had done its part by duly following up
with its erstwhile patent agent and had no intention of abandoning the
application and held that since abandonment is a question of intent and
should not be presumed per se , Petitioner ought not to suffer the
consequences of negligence of its erstwhile patent agent. Writ petition was
allowed and the status of the application as ‘deemed to be withdrawn under
Section 11B(4)’ was quashed with a direction to the Controller to restore the
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 6 of 42

application and afford an opportunity to the Petitioner to file Form-18 and
proceed with the examination of the patent application. In Synertec Pty Ltd
v. Union of India & Anr., W.P.(C)-IPD 53/2025 decided on 03.11.2025,
RFE was not filed on time owing to inadvertent error of mentioning the
exact date by the agent, as found by the Court. Observing that the Petitioner
had no intent of abandoning or withdrawing its application and was not
negligent as it took all steps within its control to diligently pursue the
prosecution of the application, writ petition was allowed and Petitioner was
allowed to submit Form-18.
10. It was argued that these judgements apply to the present case on all
four corners. Appellant through its patent agent had been in continuous
communication with the Patent Office ever since the date of filing of the
application on 15.02.2010. Appellant was diligently communicating with the
first patent agent well before the expiry of the 31-month period from the first
priority date on 22.10.2009 and record will further bear testament to the fact
that there was no intent to abandon the application. On 12.09.2009,
Appellant instructed the first patent agent to file the Indian national phase
application, however, the agent missed the deadline of 22.10.2009 and
advised the Appellant to file the application disclaiming earliest/first priority
and instead adhere to timelines as per the second priority date. Despite the
advise being detrimental to Appellant’s interest in protecting novelty of its
invention through the earliest priority date, in order to protect its interest in
securing a patent in India over the drug, Appellant followed the advise and
gave instructions to proceed with the filing and the application was filed on
15.02.2010, which was well within 31 months counted from the second date.
Critically, when the application was filed it was specifically mentioned in
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 7 of 42

Form-1 that document PCT form/IB/304 was also filed and this point is
significant, since the said document issued by the international bureau
specifically mentions all three priority dates and defies the allegation that
Appellant supressed the earliest priority date while filing Form-1.
11. It was contended that Indian patent practice allows disclaimer of the
earliest priority date to extend the 31 months period for filing national phase
application as evident from past cases. Indian Patent Application no.
201647044797 was filed in India disclaiming the PCT priority application
after 31 months from the said priority date. The application proceeded
towards grant despite disclaiming the PCT priority to extend the 31 months
timeline. Notably, the application had the PCT filing date recorded as the
priority on IPO portal and not the priority disclaimed. In the instant case, the
application shows priority dated 20.09.2007 on record instead of disclaimed
priority 22.03.2007. In the past, IPAB has allowed applicant to seek
extension by one month to file national phase application to meet the delay
caused due to docketing/technical failure of docketing system in Tryton
Medical Inc., A Delaware Corporation, having head quarters at 1000 Park
Forty Plaza, Suite 325, Durham, NC 27713 United States v. The
Controller General of Patents and Trade Marks Boudhik Sampada
Bhawan, S.M. Road, Near Antop Hill Post Office, Antop Hill, Mumbai -
400 037 and Another, 2015 SCC OnLine IPAB 77 . In Nokia Corporation
v. Deputy Controller of Patents and Designs, W.P. No. 2057/2010, decided
on 24.01.2011, the Madras High Court held that Courts and statutory
authorities are to do substantial justice. Object of Rule 138 is that prescribed
time under Rule 20 can be extended by one month on showing sufficient
cause, at the discretion of the Controller and thus it was not correct to reject
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 8 of 42

the application by treating it to be not maintainable. Even in Nippon Steel
(supra), this Court has held that a party which has been in continuous
correspondence with the Patent Office cannot be deemed to have abandoned
its patent application.
12. It was urged that Respondent erred in holding that Appellant filed
Form-13 for amendment of priority date belatedly i.e., after 14 years of
filing the application. Firstly, there is no limitation for filing a request for
amendment of the priority date. Secondly, having dropped its reliance on
earliest priority date at the time of filing Form-1, there was no occasion or
need to move the amendment application at that stage. The issue of
amendment came up for the first time when Patent Office issued the FER on
14.03.2018, wherein it raised an objection that RFE ought to have been filed
within 48 months from the earliest priority date. It is in response to this that
first patent agent informed the Patent Office that first priority date had been
disclaimed at the time of filing of Form-1 on 15.02.2010 and later filed for
amendment. Appellant would have explained these facts to the Respondent,
however, unfortunately owing to negligence of the agent, there was no
representation on behalf of the Appellant during the hearing on 02.08.2019
and the application was refused. Detailed submissions were made by the
second agent at the time of extended hearing, both orally and in writing,
seeking condonation of delay, assuming there was any and petition was also
filed under Rule 137 but without looking into the law and genuine reasons
cited by the Appellant, the impugned order was passed. The very fact that
Appellant sought extended hearing and revival of the application is evidence
enough to demonstrate its intent to prosecute the application vigorously and
not abandon it.
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 9 of 42

13. Arguing on behalf of the Respondent, Ms. Nidhi Raman, learned
CGSC submitted that the impugned order has been rightly passed treating
the patent application as withdrawn and to buttress this plea, she relies on
the relevant statutory provisions being Rules 20(4)(i), 22 and 24(B)(1)(i) of
2003 Rules as also Section 11(B) of 1970 Act. It is urged that Appellant
filed national phase application on 15.02.2010, approximately after four
months from the prescribed timeline of 31 months from first/earliest priority
date. Rule 20(4)(i) of 2003 Rules mandates filing of the application within
31 months from priority date as referred to in Article 2(xi) of PCT, which
defines ‘priority date’ for computing time limits to inter alia mean: “ …..(b)
w here the international application contains several priority claims under
Article 8, the filing date of the earliest application whose priority is so
claimed …” . Rule 22 provides consequences of failure to comply with the
mandate of the timeline of 31 months and stipulates that: “An international
application in India shall be deemed to be withdrawn if the applicant does
not comply with the requirement of rule 20”. It is settled that the prescribed
timeline for entry into the national phase is non-extendable. Rule 138 was
neither invoked by the Appellant nor is applicable in the instant case, as the
delay was more than one month, beyond which the Controller has no
discretion to extend the timeline. Similarly, Section 11B(1) read with Rule
24(B)(1)(i) mandates that RFE should be filed within 48 months from
first/earliest priority, which in the instant case is 22.03.2007. The request
was, however, filed on 16.09.2011 albeit it should have been filed on or
before 22.03.2011 and consequence of this failure as provided in Section
11B(4), is that the application shall be treated as withdrawn. This provision
is mandatory and leaves no scope for discretion with the Controller even for
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 10 of 42

one day and for no reason, including negligence of the patent agent.
14. It was argued that there was glaring suppression on the part of the
Appellant in disclosing the earliest priority. Form-1 requires disclosure of
the priority details and as evident in the instant case, while filing the national
phase application, Appellant’s first patent agent deliberately omitted to
specify the first/earliest priority i.e., US 60/896,458 dated 22.03.2007 to
mislead the Patent Office into accepting the application, which was
otherwise time-barred, having been filed beyond 31 months from this date.
The Form was not accompanied by any document indicating the intent of
Appellant to disclaim/disregard the first/earliest priority and for the first
time Form-13 was filed on 28.06.2024 for voluntary amendment i.e., after
14 years and this is a conceded position in the appeal, paragraph 12.8
whereof reads: “However, the first agent did not file a request for
amending/removing the priority claim on Form-13 at the time of filing the
subject application out of negligence” and the request was rightly
disallowed.
15. It was further argued that the entire case of the Appellant is predicated
on its request for amendment filed in Form-13 to disclaim/disregard the
first/earliest priority, which it perceives is a matter of right. This stand is
wholly flawed in law. Rule 22 of 2003 Rules provides consequences of non-
compliance with requirements of Rule 20 of 2003 Rules and is couched in a
language which shows that it is mandatory and not directory in nature,
which means that once an application is non-compliant with the timelines
under Rule 20(4)(i), Rule 22 is attracted and the application is deemed to be
withdrawn. In this case, Appellant filed a formal request by submitting
Form-13 on 28.06.2024 and the amendment was rightly declined and
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 11 of 42

application was treated as withdrawn. It was strenuously argued that
disclaiming/amending earliest/first priority date to extend the deadline for
entering national phase and/or filing RFE is not permissible and much less at
the discretion of the Respondent and in support reliance was placed on the
judgement of this Court in Nippon Steel (supra). It is clear that Appellant’s
move to disclaim/disregard the first priority date is only to circumvent the
missed deadlines for both: (a) filing national phase application; and (b) filing
the RFE, which if permitted, will contravene statutory provisions and
judicial precedents. The judgments cited by the Appellant are
distinguishable on facts. In judgment of the Madras High Court in Nokia
Corporation (supra), the extension was up to one month under Rule 138,
whereas in the present case, the delay is four months for national entry and
six months for RFE and no request was or could have been made under Rule
138. Decision in European Union (supra) supports the Respondent
inasmuch as Court held that timelines for national phase entry and RFE are
non-extendable.
16. Arguing in rejoinder, learned Senior Counsel for the Appellant
reiterated that the Appellant had no intent to abandon the patent application,
which is evident from the correspondence exchanged with the first patent
agent and it is judicially recognised that if the patent agent is negligent and
no fault can be attributed to the applicant, Court should be liberal in
condoning the default since the right of a patentee to seek grant of patent for
his years of hard work and skill is an important right. In fact, statutorily also
right to amend priority date is recognised in the form of Section 57(5) of the
1970 Act. It was asserted that there is no timeline prescribed for filing an
amendment application and thus there is no impediment in allowing the
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 12 of 42

same, even considering that it was filed belatedly in 2024 albeit there is no
delay since the Patent Office itself raised this issue only in the FER dated
14.03.2018. The allegation of suppression and misrepresentation due to non-
disclosure of first/earliest priority date was vehemently denied and it was
submitted that the subject application is based on PCT application and all
details of PCT are publicly available. The date was not mentioned in Form-1
only because the first date was disclaimed. It is wrong for the Respondent to
take a position that Appellant waited for 14 years to seek amendment. After
the objection was raised in the FER, a hearing was scheduled on 30.03.2015
and Appellant informed the Patent Office in 2015 first and then in 2018
when response was filed to the FER on 14.09.2018. Most importantly, no
third-party rights will be impacted if the amendment is allowed and if it all,
the disadvantage will inure to the Appellant as some of its claims may be
excluded, if disclaimer of priority is allowed. On the other hand, if Form-13
is not accepted and application is not revived, it will cause grave and
irreparable loss to patentee’s substantial rights.
17. Heard learned Senior Counsel for the Appellant and learned CGSC
for the Respondent and examined their submissions.

18. An interesting question has been raised by the Appellant in the
present case but, in my view, the answer is not far to find. Before proceeding
further, it would be useful and relevant to capture a few dates and events as
also the applicable provisions. Appellant filed PCT International Application
on 24.03.2008 claiming priority from US 60/896,458 dated 22.03.2007, US
60/994,902 dated 20.09.2007 and US 61/066,592 dated 20.02.2008. National
phase application was indisputably filed in India on 15.02.2010 and the
deadline of 31 months for filing of this application is one of the bone of
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 13 of 42

contentions between the parties. While Appellant contends that at the time
of filing the application, the earliest priority date of US 60/896,458 dated
22.03.2007 was intended to be disclaimed and which is why only second
and third priority dates were mentioned in Form-1, Respondent takes a
position that at the time of filing the application the earliest/first priority date
was deliberately concealed and suppressed and no document was filed
voluntarily disclaiming the said priority date albeit there is no dispute that
owing to priority claimed in the international PCT application from the US
patents, the prescribed timeline to enter the national phase in India was 31
months from the first/earliest priority date i.e., 22.03.2007. Appellant banks
on the second priority date of US 60/994,902 dated 20.09.2007 to count the
31 months for entering national phase as also 48 months for REF by
claiming disclaimer of earliest date through Form-13 filed under Section
57(5) of 1970 Act for amendment of the priority date. Respondent counts
both the timelines from first/earliest priority date i.e., 22.03.2007 and
submits that these timelines are non-extendable and owing to non-
compliance with applicable timelines of 31 and 48 months respectively, the
application has been deemed withdrawn and there can be no revival of an
application which is no longer valid.
19. Coming back to the chronology of events, Appellant received the FER
on 14.03.2018 and filed its response on 14.09.2018. First hearing notice was
issued on 17.07.2019 scheduling a hearing on 02.08.2019. Due to non-
representation of the Appellant on the scheduled date, Respondent refused
the application on 05.08.2019 but on a request from the Appellant, extended
hearing notice was issued on 09.05.2024, scheduling the hearing for
14.06.2024, which was attended by second patent agent engaged by the
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 14 of 42

Appellant after discharging the first patent agent, who according to the
Appellant had been negligent in prosecuting the matter and had rendered
incorrect advise at the time of filing the Indian phase application. Written
submissions were filed by the Appellant on 28.06.2024 along with Form-13
for voluntary amendment of first priority date so as to extend the deadlines
of 31 and 48 months, respectively. By impugned order dated 29.10.2024,
Respondent treated the patent application as withdrawn owing to failure to
file the national phase application within 31 months from first/earliest
priority date as required under Rule 20(4)(i) of the 2003 Rules as also for
failure to file RFE within 48 months from the first/earliest priority date as
required under Section 11B read with Rule 24(B)(1)(i). Both sides have
addressed extensive arguments and to appreciate them, it is incumbent to
look at the scheme of the applicable provisions.
20. Rule 20(1) of the 2003 Rules provides that an application
corresponding to an international application filed under PCT may be made
in Form-1 and Rule 20(2) proscribes processing of this application before
expiry of time limit prescribed in Rule 20(4)(i), which provides that time
limit referred to in sub-Rule (2) shall be 31 months from the priority date as
referred to in Article 2(xi) of PCT. Rule 22 provides consequences of non-
compliance and stipulates that an international application designating India
shall be deemed to be withdrawn if the applicant does not comply with the
requirements of Rule 20. Section 11B concerns RFE and sub-Section (1)
provides that no application for a patent shall be examined unless the
applicant or any other interested person makes a request in the prescribed
manner for such examination within the prescribed period and the period for
making RFE under Section 11B is provided under Rule 24B, which is 48
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 15 of 42

months from the date of priority of the application or from the date of filing
of the application, whichever is earlier. Relevant provisions are extracted
hereunder for the ease of reference:-
“ Rule 20. International applications designating or designating and
electing India. —
(1) An application corresponding to an international application filed
under Patent Cooperation Treaty may be made in Form 1 under sub-
section (1A) of section 7.
Explanation.—For the purpose of this rule, “an application corresponding
to an international application means” an international application as
filed under Patent Cooperation Treaty which includes any amendments
made by the applicant under Article 19 and communicated to Designated
Office under Article 20 or any amendment made under sub-clause (b) of
clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such application corresponding to
an international application designating India, may delete a claim, in
accordance with the provisions contained in Rule 14.
(2) The Patent Office shall not commence processing of an application
filed corresponding to international application designating India before
the expiration of the time limit prescribed under sub-rule (4)(i).
(3) An applicant in respect of an international application designating
India shall, before the time limit prescribed in subrule (4)(i),—
(a) pay the prescribed national fee and other fees to the patent office
in the manner prescribed under these rules and under the regulations
made under the Treaty;
(b) and where the international application was either not filed or has
not been published in English, file with the patent office, a translation
of the application in English, duly verified by the applicant or the
person duly authorized by him that the contents thereof are correct
and complete.
(4)(i) The time limit referred to in sub-rule (2) shall be thirty-one months
from the priority date as referred to in Article 2(xi);
(4)(ii) Notwithstanding anything contained in clause (i), the Patent Office
may, on the express request filed in Form 18 along with the fee specified
in First Schedule, process or examine the application at any time before
thirty-one months…
Rule 22. — Effect of non-compliance with certain requirements. – An
international application designating India shall be deemed to be
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 16 of 42

withdrawn if the applicant does not comply with the requirements of Rule
20.
“Section 11B—
Request for examination:
(1) No application for a patent shall be examined unless the applicant or
any other interested person makes a request in the prescribed manner for
such examination within the prescribed period.
(2) (Omitted)
(3) In case of an application in respect of a claim for a patent filed under
sub-section (2) of section 5 before the 1st day of January, 2005 a request
for its examination shall be made in the prescribed manner and within the
prescribed period by the applicant or any other interested person.
(4) In case the applicant or any other interested person does not make a
request for examination of the application for a patent within the period as
specified under sub-section (1) or sub-section (3), the application shall be
treated as withdrawn by the applicant:
Provided that—
(i) the applicant may, at any time after filing the application but before
the grant of a patent, withdraw the application by making a request
in the prescribed manner; and
(ii) in a case where secrecy direction has been issued under section 35,
the request for examination may be made within the prescribed period
from the date of revocation of the secrecy direction.”
“Rule 24B. Examination of application. —
(1) (i) A request for examination under section 11B shall be made in Form
18 within forty-eight months from the date of priority of the application or
from the date of filing of the application, whichever is earlier.”
“Article 2(xi) of the PCT –
(xi) “priority date,” for the purposes of computing time limits, means: (a)
where the international application contains a priority claim under Article
8, the filing date of the application whose priority is so claimed;
(b) where the international application contains several priority claims
under Article 8, the filing date of the earliest application whose priority is
so claimed;
(c) where the international application does not contain any priority claim
under Article 8, the international filing date of such application.”
21. The subject patent application relates to “MAGNESIUM
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 17 of 42

COMPOSITIONS AND USES THEREOF”. The moot question that arises
for consideration is whether Appellant can be permitted to disclaim and/or
amend the earliest priority date to claim priority from the original second
date of US 60/994,902 dated 20.09.2007, which will result in extending the
deadlines for entering national phase and filing RFE. Parties are ad idem that
international PCT application bearing no. PCT/US2008/058073 was filed on
24.03.2008 claiming three priorities: US 60/896,458 dated 22.03.2007
(earliest/first), US 60/994,902 dated 20.09.2007 (second) and US
61/066,592 dated 20.02.2008 (third). As per Rule 20(4)(i) national phase
application was to be filed within 31 months from the earliest priority date
22.03.2007 i.e., on or before 22.10.2009. However, Appellant filed the
national phase application on 15.02.2010 and consequently, exceeded the
time limit by nearly four months. Respondent alleges that Appellant
deliberately suppressed the first/earliest priority date in Form-1 at the time
of filing the national phase application in India on 15.02.2010 with an intent
to mislead the Patent Office into accepting the application which was
otherwise time barred and the mischief is reinforced by the fact that no
document was filed with Form-1 to disclose that Appellant had disclaimed
the earliest/first priority date.
22. On a fact check, Respondent is right in urging that Appellant did not
disclose the earliest priority date of 22.03.2007 in Form-1 and mentioned
only the second and third priority dates i.e., US 60/994,902 dated
20.09.2007 and US 61/066,592 dated 20.02.2008. It is equally established
that at that stage, first patent agent did not inform the Patent Office of
Appellant’s intent to disclaim/disregard the first date. Respondent’s counsel
claims this to be a deliberate concealment while Appellant has attempted to
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 18 of 42

explain that the erstwhile applicant/Magceutics, Inc. through its attorneys
based in California, USA instructed the first patent agent on 12.09.2009 to
file a national phase application in India and on a follow up, it was informed
that the agent had not received any instructions to do so and accordingly,
advised that since 31 months deadline had lapsed, the only option was to
enter the national phase by claiming the second and third priorities of US
60/994,902 dated 20.09.2007 and US 61/066,592 dated 20.02.2008.
Accepting this advise, erstwhile patent applicant instructed the agent to file
the application with these two priorities. For reference Form-1 is filed as
follows:

23. Appellant also endorsed in Form-1 that the declaration in the form
was to the best of its knowledge, information and belief and the facts and
matters stated therein were correct. The application was entertained taking
31 months from second priority date i.e., 20.09.2007 and basis this RFE
filed on 16.09.2011 was also accepted being within 48 months. Ms. Raman
rightly urged that had the Appellant disclosed the first/earliest priority date
at the outset, the application would not have been entertained, being time
barred. Whether the omission to disclose the earliest date to overcome the
missed deadlines was deliberate or not can be discerned only from
surrounding circumstances. Unquestionably, Appellant knew that it was
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 19 of 42

required to disclose the earliest priority date but chose not to do so as it was
strategically advantageous to take the second date which extended the
timelines to enter the national phase and file RFE. Question is who benefited
from the omission and the answer to this is a strong indicator that non-
disclosure of the earliest date was to overcome the timelines and perhaps a
well thought of initiative. In fact, there was no disclosure till the objection
was raised in the FER in 2018 and it was only in 2024 that Form-13 was
filed to seek amendment of the date along with a petition under Rule 137 to
condone the irregularity.
24. Arguendo, even if the earliest date was not mentioned on the advise of
the first patent agent and Appellant acted under a bona fide belief that it
could disclaim the first date and claim priority from the second, this cannot
aid the Appellant for more than one reason. It is trite that timelines for filing
national phase applications as also RFEs are mandatory and non-extendable.
Rule 20(4)(i) of 2003 Rules provides 31 months for filing an application
corresponding to an international application filed under PCT from the
priority date referred to in Article 2(xi) of PCT, which defines ‘priority date’
and stipulates that priority date for computing time limits means inter alia
filing date of the earliest application whose priority is so claimed, where the
international application contains several priority claims under Article 8.
Rule 22 provides consequences of non-compliance with the deadlines and in
no uncertain terms provides that if the timeline is not met, the application
will be ‘deemed to be withdrawn’ by a deeming fiction of law. The vires of
Rule 22 was challenged before a Division Bench of this Court in Diebold
Self Service Systems v. Union of India and Others, 2022 SCC OnLine Del
4555. In the said case, Petitioner filed the Indian phase application after a
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 20 of 42

delay of 5 months 04 days from the first priority date albeit along with
petition under Rule 137 of 2003 Rules and an affidavit explaining the delay.
When the application was refused, Petitioner approached the Court for
declaring Rule 22 as ultra vires to the provisions of the 1970 Act as also to
quash the impugned communications and take the national phase application
on record. The Division Bench dismissed the petition holding that Rule 22
was not only in consonance with the object and reasoning of 1970 Act but
also with PCT Rules and Regulations. Significantly, it was held that perusal
of Section 7(1A) of 1970 Act reveals that for grant of patent in India,
applicant has to mandatorily file a corresponding application before the IPO
for all international applications under the PCT designating India within the
prescribed period of 31 months in compliance of Section 21 of the 1970 Act
or else the same shall be deemed to be abandoned. It was also noted that
although 31 months were provided under Rule 20(4)(i) but Section 21
provided extension for one month to file the application. For the purposes of
this case, it is important to note that the Division Bench held that the word
‘shall’ in Rule 22 is mandatory and not directory and an applicant like the
Petitioner was bound by the statute and the laws of land. Having failed to
file the requisite application within time, Petitioner is seeking to make a
belated challenge and flog a dead horse. Under the garb of the writ petition,
Petitioner was trying to claim pardon for not adhering to stipulated timelines
which could not have been the intention of the legislature. It was also
observed that filing of an application for a patent within the stipulated time
frame is of utmost importance and contention of the Petitioner that some
leeway be granted in the form of a remedy beyond the statutory period of 31
months holds no merit on two counts. Firstly, only one extra month has been
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 21 of 42

granted for filing national phase application in India and secondly, the
benefit cannot be extended at the initial stage i.e., at the time of filing.
Relevant paragraphs are as follows:-
“19. Before proceeding any further, for the purposes of better elucidation
of the facts involved in present petition, it is imperative to reproduce few
of the relevant provisions of the Act(s) and Rule(s) involved in the present
petition, which are as under:—
Patent Cooperation Treaty, Washington, June 19, 1970:
“Article 20 : Communication to Designated Offices
(1)(a) The international application, together with the
international search report (including any indication referred to in
Article 17(2)(b)) or the declaration referred to in Article 17(2)(a),
shall be communicated to each designated Office, as provided in
the Regulations, unless the designated Office waives such
requirement in its entirety or in part. (b) The communication shall
include the translation (as prescribed) of the said report or
declaration. (2) If the claims have been amended by virtue of
Article 19(1), the communication shall either contain the full text of
the claims both as filed and as amended or shall contain the full
text of the claims as filed and specify the amendments, and shall
include the statement, if any, referred to in Article 19(1).”
“Article 21 : International Publication
(1) The International Bureau shall publish international
applications.
(2)(a) Subject to the exceptions provided for in subparagraph (b)
and in Article 64(3), the international publication of the
international application shall be effected promptly after the
expiration of 18 months from priority date of that application. (b)
The applicant may ask the International Bureau to publish his
international application any time before the expiration of the time
limit referred to in subparagraph (a). The International Bureau
shall proceed accordingly, as provided in the Regulations. (3) The
international search report or the declaration referred to in Article
17(2)(a) shall be published as prescribed in the Regulations. (4)
The language and form of the international publication and other
details are governed by the Regulations. (5) There shall be no
international publication if the international application is
withdrawn or is considered withdrawn before the technical
preparations for publication have been completed. (6) If the
international application contains expressions or drawings which,
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 22 of 42

in the opinion of the International Bureau, are contrary to morality
or public order, or if, in its opinion, the international application
contains disparaging statements as defined in the Regulations, it
may omit such expressions, drawings, and statements, from its
publications, indicating the place and number of words or
drawings omitted, and furnishing, upon request, individual copies
of passages omitted”
“Article 22 : Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnish a copy of the international
application (unless the communication provided for in Article 20
has already taken place) and a translation thereof (as prescribed),
and pay the national fee (if any), to each designated Office not
later than at the expiration of 301 months from priority date.
Where the national law of the designated State requires the
indication of the name of and other prescribed data concerning the
inventor but allows that these indications be furnished at a time
later than that of the filing of a national application, the applicant
shall, unless they were contained in the request, furnish the said
indications to the national Office of or acting for the State not later
than at the expiration of 301 months from priority date. (2) Where
the International Searching Authority makes a declaration, under
Article 17(2)(a), that no international search report will be
established, the time limit for performing the acts referred to in
paragraph (1) of this Article shall be the same as that provided for
in paragraph (1). (3) Any national law may, for performing the acts
referred to in paragraphs (1) or (2), fix time limits which expire
later than the time limit provided for in those paragraphs.”
Patent Cooperation Treaty Regulations
“Rule 48 International Publication
48.2 Contents (a) The publication of the international application
shall contain : (i) a standardized front page; (ii) the description;
(iii) the claims; (iv) the drawings, if any; (v) subject to paragraph
(g), the international search report or the declaration under Article
17(2)(a);
(vi) any statement filed under Article 19(1), unless the International
Bureau finds that the statement does not comply with provisions of
Rule 46.4; (vii) where the request for publication under Rule
91.3(d) was received by the International Bureau before the
completion of the technical preparations for international
publication, any request for rectification of an obvious mistake, any
reasons and any comments referred to in Rule 91.3(d); (viii) the
indications in relation to deposited biological material furnished
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 23 of 42

under Rule 13bis separately from the description, together with an
indication of the date on which the International Bureau received
such indications; (ix) any information concerning a priority claim
referred to in Rule 26bis.2(d);
(x) any declaration referred to in Rule 4.17, and any correction
thereof under Rule 26ter.1, which was received by the International
Bureau before the expiration of the time limit under Rule 26ter.1;
(xi) any information concerning a request under Rule 26bis.3 for
restoration of the right of priority and the decision of the receiving
Office upon such request, including information as to the criterion
for restoration upon which the decision was based.”
“Rule 49 Copy, Translation and Fee under Article 22
49.6 Reinstatement of Rights after Failure to Perform the Acts
Referred to in Article 2210 (a) Where the effect of the international
application provided for in Article 11(3) has ceased because the
applicant failed to perform the acts referred to in Article 22 within
the applicable time limit, the designated Office shall, upon request
of the applicant, and subject to paragraphs (b) to (e) of this Rule,
reinstate the rights of the applicant with respect to that
international application if it finds that any delay in meeting that
time limit was unintentional or, at the option of the designated
Office, that the failure to meet that time limit occurred in spite of
due care required by the circumstances having been taken. (b) The
request under paragraph (a) shall be submitted to the designated
Office, and the acts referred to in Article 22 shall be performed,
within whichever of the following periods expires first : (i) two
months from the date of removal of the cause of the failure to meet
the applicable time limit under Article 22; or (ii) 12 months from
the date of the expiration of the applicable time limit under Article
22; provided that the applicant may submit the request at any later
time if so permitted by the national law applicable by the
designated Office. (c) The request under paragraph (a) shall state
the reasons for the failure to comply with the applicable time limit
under Article 22. (d) The national law applicable by the designated
Office may require : (i) that a fee be paid in respect of a request
under paragraph (a); (ii) that a declaration or other evidence in
support of the reasons referred to in paragraph (c) be filed. (e) The
designated Office shall not refuse a request under paragraph (a)
without giving the applicant the opportunity to make observations
on the intended refusal within a time limit which shall be
reasonable under the circumstances. (f) If, on October 1, 2002,
paragraphs (a) to (e) are not compatible with the national law
applied by the designated Office, those paragraphs shall not apply
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 24 of 42

in respect of that designated Office for as long as they continue not
to be compatible with that law, provided that the said Office
informs the International Bureau accordingly by January 1, 2003.
The information received shall be promptly published by the
International Bureau in the Gazette.”
The Patent Act, 1970
“Section 7 . Form of application.—(1) Every application for a patent
shall be for one invention only and shall be made in prescribed form
and filed in The Patent office.
(1A) Every international application under The Patent Cooperation
Treaty for a patent, as may be filed designating India shall be
deemed to be an application under this Act, if a corresponding
application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section
(1A) and its complete specification processed by The Patent office
as designated office or elected office shall be the international
filing date accorded under The Patent Cooperation Treaty”
“Section 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. Explanation.—Where the application for
a patent or any specification or, in the case of a convention
application or an application filed under The Patent Cooperation
Treaty designating India any document filed as part of the application
has been returned to the applicant by the Controller in the course of
proceedings, the applicant shall not be deemed to have complied with
such requirements unless and until he has re-filed it or the applicant
proves to the satisfaction of the Controller that for the reasons beyond
his control such document could not be re-filed. (2) If at the expiration
of the period as prescribed under sub section (1)— (a) an appeal to
the High Court is pending in respect of the application for The Patent
for the main invention; or (b) in the case of an application for a patent
of addition, an appeal to the High Court is pending in respect of either
that application or the application for the main invention, the time
within which the requirements of the Controller shall be complied
with shall, on an application made by the applicant before the
expiration of the period as prescribed under sub-section (1), be
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 25 of 42

extended until such date as the High Court may determine. (3) If the
time within which the appeal mentioned in sub-section (2) may be
instituted has not expired, the Controller may extend the period as
prescribed under subsection (1), to such further period as he may
determine : Provided that if an appeal has been filed during the said
further period, and the High Court has granted any extension of time
for complying with the requirements of the Controller, then the
requirements may be complied with within the time granted by the
Court.”
“Section 159 . Power of Central Government to make rules. — (1) The
Central Government may, by notification in the Official Gazette, make
rules for carrying out the purposes of this Act. (2) Without prejudice
to the generality of the foregoing power, the Central Government may
make rules to provide for all or any of the following matters,
namely:— (i) the form and manner in which any application for a
patent, any specifications or drawings and any other application or
document may be filed in The Patent office; (ia) the period which the
Controller may allow for filing of statement and undertaking for in
respect of applications under sub-section (1), the period within which
the details relating to processing of applications may be filed before
the Controller and the details to be furnished by the applicant to the
Controller under sub-section (2) of section 8; (ib) the period within
which a reference to the deposit of materials shall be made in the
specification under sub-clause (A) of clause (ii) of proviso to
subsection (4) of section 10; (ic) the period for which application for
patent shall not be open to the public under sub-section (1) and the
manner in which the applicant may make a request to the Controller
to publish his application under sub-section (2) of section 11 A; (id)
the manner of making the request for examination for an application
for patent and the period within which such examination shall be
made under sub-sections (1) and (3) of section 11B; (ie) the manner in
which an application for withdrawal of an application for grant of a
patent shall be made and the period within which a request for
examination from the date of revocation of secrecy directions shall be
made under proviso to sub-section (4) of section 11B. (ii) the time
within which any act or thing may be done under this Act, including
the manner in which and the time within which any matter may be
published under this Act; (iii) the fees which may be payable under
this Act and the manner and time of payment of such fees; (iv) the
matters in respect of which the examiner may make a report to the
Controller; (v) the manner in which and the period within which the
Controller shall consider and dispose off a representation under sub-
section (1) of section 25; (va) the period within which the Controller
is required to dispose of an application under section 39;(vi) the form
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 26 of 42

and manner in which and the time within which any notice may be
given under this Act; (vii) provisions which may be inserted in an
order for restoration of a patent for protection of persons who may
have availed themselves of the subject-matter of The Patent after The
Patent had ceased; (viii) the establishment of branch offices of The
Patent office and the regulation generally of the business of The
Patent office, including its branch offices; (ix) the maintenance of the
register of patents and the safeguards to be observed in the
maintenance of such register in computer floppies, diskettes or any
other electronic form and the matters to be entered therein; (x) the
matters in respect of which the Controller shall have powers of a civil
court; (xi) the time when and the manner in which the register and
any other document open to inspection may be inspected under this
Act; (xii) the qualifications of, and preparation of a roll of, scientific
advisers for the purpose of section 115; (xiia) the salaries and
allowances and other conditions of service of the officers and other
employees of the Appellate Board under subsection (2) and the
manner in which the officers and other employees of the Appellate
Board shall discharge their functions under subsection (3) of section
117; (xiib) the form of making an appeal, the manner of verification
and the fee payable under sub-section (3) of section 117A; (xiic) the
form in which, and particulars to be included in the application to the
Appellate Board under sub-section (1) of section 117D; (xiii) the
manner in which any compensation for acquisition by Government of
an invention may be paid; (xiv) the manner in which the register of
patent agents may be maintained under subsection (1) of section 125
and the safeguards to be observed in the maintenance of such register
of patent agents on computer floppies, diskettes or any other
electronic form under subsection (2) of that section; the conduct of
qualifying examinations for patent agents; and matters connected with
their practice and conduct, including the taking of disciplinary
proceedings against patent agents for misconduct; (xv) the regulation
of the making, printing, publishing and selling of indexes to, and
abridgements of, specifications and other documents in The Patent
office; and the inspection of indexes and abridgements and other
documents; (xvi) any other matter which has to be or may be
prescribed. (3) The power to make rules under this section shall be
subject to condition of the rules being made after previous publication
: Provided that the Central Government may, if it is satisfied that the
circumstances exist which render it practically not possible to comply
with such condition of previous publication, dispense with such
compliance.”
“Section 160 . Rules to be placed before Parliament.—Every rule
made under this Act shall be laid, as soon as may be after it is made,
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 27 of 42

before each House of Parliament while it is in session for a total
period of thirty days which may be comprised in one session or in two
or more successive sessions, and if, before the expiry of the session
immediately following the session or the successive sessions
aforesaid, both Houses agree in making any modification in the rule
or both Houses agree that the rule should not be made, the rule shall
thereafter have effect only in such modified form or be of no effect, as
the case may be; so, however, that any such modification or
annulment shall be without prejudice to the validity of anything
previously done under that rule.”
The Patent Rules, 2003
“Rule 20 . International applications designating or designating and
electing India. — (1) An application corresponding to an international
application filed under Patent Cooperation Treaty may be made in
Form 1 under sub-section (1A) of section 7. Explanation.- For the
purpose of this rule, “an application corresponding to an
international application” means” an international application as
filed under Patent Cooperation Treaty which includes any
amendments made by the applicant under Article 19 and
communicated to Designated Office under Article 20 or any
amendment made under sub-clause (b) of clause (2) of Article 34 of
the Treaty : Provided that the applicant, while filing such application
corresponding to an international application designating India, may
delete a claim, in accordance with provisions contained in rule 14.”.
(2) The Patent Office shall not commence processing of an application
filed corresponding to international application designating India
before the expiration of the time limit prescribed under sub-rule (4)
(i). (3) An applicant in respect of an international application
designating India shall, before the time limit prescribed in sub-rule
(4)(i),— (a) pay prescribed national fee and other fees to The Patent
office in the manner prescribed under these rules and under the
regulations made under the Treaty; (b) and where the international
application was either not filed or has not been published in English,
file with The Patent office, a translation of the application in English,
duly verified by the applicant or the person duly authorised by him
that the contents thereof are correct and complete. (4) (i) The time
limit referred to in sub-rule (2) shall be thirty one months from
priority date as referred to in Article 2(xi); (ii) Notwithstanding
anything contained in clause (i), The Patent Office may, on the
express request filed in Form 18 along with the fee specified in First
Schedule, process or examine the application at any time before thirty
one months. (5) The translation of the international application
referred to in sub-rule (3) shall include a translation in English of,—
(i) the description; (ii) the claims as filed; (iii) any text matter of the
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 28 of 42

drawings; (iv) the abstract; and (v) in case the applicant has not
elected India and if the claims have been amended under Article 19,
then the amended claims together with any statement filed under the
said Article; (vi) in case the applicant has elected India and any
amendments to the description, the claims and text matter of the
drawings that are annexed to the international preliminary
examination report. (6) If the applicant fails to file a translation of the
amended claims and annexures referred to in sub-rule (5), even after
invitation from the appropriate office to do so, within a time limit as
may be fixed by that office having regard to the time left for meeting
the requirements, the amended claims and annexures shall be
disregarded in the course of further processing the application by the
appropriate office. (7) The applicant in respect of an international
application designating India shall when complying with sub-rule (3),
preferably use Forms set out in the Second Schedule before the
appropriate office as designated office.”
“Rule 22 . Effect of non-compliance with certain requirements. — An
international application designating India shall be deemed to be
withdrawn if the applicant does not comply with the requirements of
rule 20.”
“Rule 137 . Powers of Controller generally. —Any document for the
amendment of which no special provision is made in the Act may be
amended and any irregularity in procedure which in the opinion of the
Controller may be obviated without detriment to the interests of any
person, may be corrected if the Controller thinks fit and upon such
terms as he may direct.”
“Rule 138 . Power to extend time prescribed.— (1) Except for the time
prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule
20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and
(11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and
sub-rules (1) and (2) of rule 130, 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 prescribed by these rules for the doing of any act or
the taking of any proceeding thereunder shall be made before the
expiry of such time prescribed in these rules.”
20. A bare perusal of Article 22 of PCT Rules hereinabove reveals that it
is incumbent upon an applicant to furnish a copy of the international
application (unless the communication provided for in Article 20 of PCT
Rules has already taken place) along with a translation thereof, if
required, with payment of National fee, to each designated National Office
not later than at the expiration of thirty months from priority date. Not
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 29 of 42

only that, the same Article 22 of PCT Rules also provides that where the
National Law of the designated State requires the indication of the name
and other prescribed data concerning the inventor and allows that these
indications be furnished at a time later than that of the filing of a National
Phase application, the applicant shall, unless the said details were
contained in the request, furnish the said indications to the National Office
of or acting for the State not later than at the expiration of thirty months
from priority date. Thus, in essence, as expressly provided, the time for
filing a National Phase application before the IPO in India is to be thirty
months.
xxx xxx xxx
22. Filing of an application for a patent (at different levels-initial
application before country, another application before the WIPO and
lastly a National Phase application before the Designation Office), within
the stipulated time frame is of utmost importance. It is for this reason that
the whole purpose of the patent regime worldwide is to recognize an
applicant after according due chance of filing and letting the said
applicant enjoy complete protection for the entire period but, at the same
time it does not provide for enabling the said applicant to enjoy an overall
monopoly for any ‘extended’ period beyond the expiry of the mandatory
recognized life of a patent. It is in view of the aforesaid that there is no
provision for extension of a stipulated life of a patent as it becomes the
part of the public domain after its expiry.
xxx xxx xxx
28. The same issue came for consideration before a learned Single Judge
of this Court in the case of Nippon Steel (Supra) wherein it has been
observed as under:
“25. 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 grant of patent at various stages. 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’ provisions by a High Court exercising powers under
Article 226 of the Constitution. In other words, it is not possible for
this Court to accept the submission of the learned Senior counsel for
the Petitioner that the time-limits under Section 11-B(1) of the Act
read with Rule 24-B of the Rules, notwithstanding Section 11-B(4) of
the Act, are merely ‘directory’ and not mandatory.”
xxx xxx xxx
30. The Hon'ble Supreme Court in the case of State of Haryana v.
Raghubir Dayal while interpreting the word “shall” has observed as
under:—
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 30 of 42

“5. The use of the word ‘shall’ is ordinarily mandatory but it is
sometimes not so interpreted if the scope of the enactment, on
consequences to flow from such construction would not so demand.
Normally, the word ‘shall’ prima facie ought to be considered
mandatory but it is the function of the court to ascertain the real
intention of the legislature by a careful examination of the whole
scope of the statute, the purpose it seeks to serve and the
consequences that would flow from the construction to be placed
thereon. The word ‘shall’, therefore, ought to be construed not
according to the language with which it is clothed but in the context in
which it is used and the purpose it seeks to serve. The meaning has to
be ascribed to the word ‘shall’ as mandatory or as directory,
accordingly. Equally, it is settled law that when a statute is passed for
the purpose of enabling the doing of something and prescribes the
formalities which are to be attended for the purpose, those prescribed
formalities which are essential to the validity of such thing, would be
mandatory. However, if by holding them to be mandatory, serious
general inconvenience is caused to innocent persons or general
public, without very much furthering the object of the Act, the same
would be construed as directory.
xxxx

7. Therefore, the word ‘shall’ used in Section 4(1) should be
construed to be mandatory because the requirement of Section 4(1) of
the publication of the notification in the Gazette followed by their
publication in the newspapers perhaps in some cases may not meet the
needed purpose of notice to the owner or person claiming interest in
the land proposed to be acquired. For instance, in rural areas most
agriculturists may not read even the vernacular newspapers. Their
fields are their world and work therein is their breadwinner. They
would come to know only if the substance of the notification is
published (announced) in the village by beat of drum. Therefore,
publication of the substance of the notification of Section 4(1) and in
the locality is mandatory but it is not the requirement of the law that it
be done simultaneously with the publication in the Gazette or
newspapers. Though there is a time gap of more than six months
between the date of the notification under Section 4(1) in the State
Gazette and the date of the publication of the substance of the
notification in the locality, the delay by itself does not render the
notification under Section 4(1) published in the State Gazette,
invalid.”
xxx xxx xxx
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 31 of 42

33. Though the main shape and form of the patent law in India was taken
from the patent law in England, however, with time, numerous changes
have been brought. There are some inventions for which a patent can or
cannot be granted in India and situation may not be the same in other
countries. In any event, the patent laws of India are made best suited to the
laws of this land, which cannot be similar in all aspects to the laws of the
other lands (countries). Having said that, it should not be inferred from
the above that the patent laws of India are not in conformity with the
provisions of Patent Laws of the World. At best, the steps involved and the
criteria laid down therein maybe be inferred to be different.
34. We wish to note that, though the petitioner has cited plethora of
judgments, few of which are specified hereinabove, we are afraid they do
not and in fact, cannot come to the aid of the petitioner as they have no
application to the facts of the present case. In fact, few of those judgments
strengthen the findings of this Court that the provision of Rule 22 of Patent
Rules is not against the provisions of Patent Act and is rather in
consonance with provisions of the said Act. In view of the aforesaid, it is
quite abundantly clear that Rule 22 of Patent Rules is not only in
consonance with the object and reasonings of the Patent Act but also with
the PCT Rules and PCT Regulations and there are no Pari Materia
provisions in the PCT Rules or the PCT regulation even otherwise.
Further, the contention of the petitioner that it was not provided with an
opportunity of hearing and thus, there was a violation of principles of
natural justice holds no water, since it was the petitioner who failed to
comply with the statutory provisions of the Patent Act and Patent Rules to
file the application within the stipulated time. Having not done so, by
operation of law, there was no occasion for the respondents to give any
hearing and/or reason as it was in common knowledge of all applicants
like the petitioner herein that as there was no application before the
Controller (IPO) of any kind, therefore there was no occasion of it being
heard.
xxx xxx xxx
37. Having come to the aforesaid conclusion, according to us, there is no
violation of any international treaty. Thus, reliance placed upon
Commissioner of Customs (supra) by learned counsel for petitioner is
misconceived. Moreover, Rule 22 of Patent Rules is not ultra-vires in view
of Section 138 of Patent Act, and is not beyond the purview of Section 159
of Patent Act. Further, the same does not involve any sub-delegation and
the existing situation in India is neither short of, nor in contradiction with
the international position/PCT.”
25. Therefore, once the Appellant did not enter the national phase within
31 months from the earliest priority date and neither sought the one month
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 32 of 42

extension nor expressed its intent to disclaim and seek change of date at the
relevant time, it cannot be permitted to seek a change after 14 years by filing
Form-13 on 28.06.2024 when the deadline was missed years ago. Similarly,
Section 11B(1) read with Rule 24(B)(1)(i) provides that RFE is required to
be filed within 48 months from the first/earliest priority date and
consequences of this failure is explicitly provided in Section 11B(4), which
postulates that the application ‘shall be treated as withdrawn’. Taking
strength from judicial precedents, there is no doubt that 48 months is a
mandatory timeline and the consequence that non-adherence will result in
the application being ‘deemed to be withdrawn’, is a statutory consequence
and this Court cannot come to the rescue of the Appellant. In Carlos Alberto
Perez Lafuente v. Union of India and Others, 2019 SCC OnLine Del 7404,
the Division Bench of this Court was concerned with condonation of delay
in filing RFE and it was held that when the language of the Rule is as clear
as it could be, Petitioner could not have ignored the same and go by his
logic. Howsoever bona fide may have been in his conduct, he cannot seek to
evade the rigour of law. Relevant passages are as follows:-
“50. It is not in dispute that the petitioner, who is a Spanish national,
made his prior application for a patent in a convention country and,
therefore, Section 135 of the Act is attracted. As noticed above, the
petitioner made his first application to seek patent as the European Patent
Application on 28.03.2006 bearing No. 06111804.8. Since, in respect of a
Convention Application, the date of making the “basic application” is
treated as the “priority date”, on a plain reading of Rule 24-B(1)(i), the
request for examination under Section 11-B of the Act in Form-18 was
required to be made within 48 months from the date of priority, i.e.
28.03.2006 since that is the earlier of the two dates i.e. the “date of
priority”, and the date of filing of the application under the Act, which
was 28.08.2008. The period of 48 months, computed from 28.03.2006,
expired on 27.03.2010. However, the request for examination was made
on 19.11.2010.
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 33 of 42

51. No doubt, it appears that the petitioner, who is a foreign national, may
have, bona fide, believed that the time for making request for examination
of the patent application had not expired and was available when he did
make the said request under Section 11B read with Rule 24B. It does
appear that he was mislead into believing that time was available for him
to make such a request till the date when he actually made the request, in
view of the communications received by him from his Indian agent, as well
as on account of the interpretation of Rule 24B published in the
publication of WIPO. His common sense would have led him to think that
the examination of his application could be sought within forty eight
months of the date of his application - which was later in point of time
than his date of priority. However, when the language used in the Rule is
as clear as it could be, the petitioner could not have ignored the same and
gone by his own logic. Howsoever bona fide he may have been in his
conduct, he cannot seek to evade the rigor of the law, which is so clear
and explicit in its enunciation.”

26. In European Union (supra), which is heavily relied upon by the
Appellant, Coordinate Bench of this Court divided the judicial precedents on
the subject in four broad categories being: (a) decisions relating to entry of
international application into the national phase; (b) decisions relating to
delay in filing RFE; (c) decisions concerning response to FERs; and (d)
decisions concerning regular payments of annuities once patents have been
granted. Under the first category, reference was made to the decision in
Nokia Corporation (supra) and for the second category, to the decisions in
Nippon Steel (supra), M/s Iritech Inc v. The Controller of Patents, 2017
SCC OnLine Del 7983 and Carlos Alberto (supra). Court then divided the
deadlines under the 1970 Act read with the Rules in the context of
prosecution of patent applications into two categories: (a) deadlines which
can be extended; and (b) deadlines which cannot be extended. Non-
extendable deadlines were held to include inter alia:-
(i) Deadlines relating to entry of the application into the national
phase;
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 34 of 42

(ii) Timelines for filing of requests for examination; and
(iii) Timelines for putting an application in order for grant etc.
27. Having so categorized, Court observed that provisions of the 1970
Act and 2003 Rules are abundantly clear as to which deadlines can be
extended and which cannot be and insofar as time for filing RFE is
concerned, Division Bench in Carlos Alberto (supra), has categorically held
that the time period is mandatory and cannot be extended even if in the facts
of a given case, patent agent is found to be negligent.
28. In Nippon Steel (supra), this Court held that there is a logic to the
time limits set under the 1970 Act. The provisions of the 1970 Act and 2003
Rules have to expressly reflect the legislative intent to permit relaxation of
time limits, absent which, such relaxations cannot be read into the provisions
by a High Court exercising power under Article 226 of the Constitution of
India. It was also held and this is relevant for the present case that merely
because there is no time limit prescribed for filing an application for
amendment of the priority date, it does not mean that such application can
be filed even after a patent application ceases to exist in law. Once an
application is deemed to have been withdrawn in terms of Section 11B(4),
Controller cannot entertain an application for amendment. The contention of
the Petitioner that where no substantive right of anyone was going to be
affected by extending the time limit, Controller ought to take a liberal view,
did not appeal to the Court. Court also negated the contention that Controller
could have exercised powers under Rule 137 and observed that Rule 137
only applies to amendment of a document for which there is no special
provision in the 1970 Act. Section 57(5) does provide for amending the
priority date, however, Petitioner’s request for amending the date was with a
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 35 of 42

view to indirectly get the time for filing the RFE extended for which power
under Rule 137 cannot be invoked so as to permit an amendment of an
application, which stands withdrawn by operation of Section 11B(4) of the
1970 Act. Relevant passages are as follows:-
“ 14. Mr. Chandra next submitted that the reason for the Petitioner failing
to file RFE on or before 9th February 2010 was bonafide. The computer
system of the Petitioner's attorney did not show any warning as regards
the expiry of the deadline for filing the RFE since it had wrongly docked
the application for amendment as an RFE. It is submitted that the CoP
ought to have accepted the explanation offered in the affidavit of Mr. Tony
Mon George. Relying extensively on the decision of the Supreme Court in
Kailash v. Nanhku (2005) 4 SCC 480 Mr. Chandra argued that rules of
procedure were handmaids of justice and could not be rigidly applied so
as to defeat justice. He repeatedly urged that only where substantive rights
of parties would be affected, the time limits set by a statute had to be
rigidly applied. Since in this case no prejudice would be caused to the
office of the CoP there should have been no difficulty in allowing the
Petitioner's request for amendment of the priority date to 9th February
2007 which, although to the Petitioner's detriment, would in turn have
shifted the deadline for the filing of the RFE to 9th February 2011. On the
other hand, the Petitioner would be subject to tremendous loss and
hardship in the event the amendment was not allowed since its application
for grant of patent in India would not be able to be revived thereafter.
15. Thirdly, it is submitted by Mr. Chandra that there was no rigidity to
the deemed withdrawal of the patent application in terms of Section 11-
B(4) of the Act if an RFE was not filed within 48 months of the priority
date in terms of Rule 24-B of the Rules. Those provisions, according to
him, were only directory. He submits that even in a worse case of deemed
‘abandonment’ in terms of Section 21 of the Act, this Court had in Ferid
Allani v. Union of India 2008 (37) PTC 448 (Delhi) and
Telefonaktiebolaget LM Ericsson (PUBL) v. Union of India 168 (2010)
DLT 461 adopted a realistic and practical approach and accepted the
explanation offered by the Petitioners as to why their respective patent
applications should not be so treated. According to him, the facts of the
present case were far better than the facts of those cases.
xxx xxx xxx
21. Mr. Chandra referred to Rule 137 of the Rules to urge that CoP does
have powers in that regard. Rule 137 reads as under:
“ 137. Powers of Controller generally - Any document for the amendment
of which no special provision is made in the Act may be amended and any
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 36 of 42

irregularity in procedure which in the opinion of the Controller may be
obviated without detriment to the interests of any person; may be
corrected if the Controller thinks fit and upon such terms as he may
direct.”
22. This Court is unable to agree with the above submission of Mr.
Chandra. Rule 137 only applies to the amendment of a document for
which there is no special provision in the Act. Section 57(5) of the Act does
provide for amending the priority date. However, the Petitioner's request
for amending the priority date is with a view to indirectly get the time for
filing the RFE extended. In the considered view of this Court, the power
under Rule 137 cannot be invoked by the Office of the CoP in the
circumstances of the present case to permit an amendment to a patent
application that has already been ‘withdrawn’ by operation of Section 11-
B(4) of the Act.
xxx xxx xxx
24. While an applicant can seek to amend even the priority date of a patent
application in terms of Section 57(5) of the Act, such request for
amendment can be made only in relation to an application that exists in
law. To recapitulate the facts in the present case, the request for
amendment filed by the Petitioner in Form 13 on 22nd August 2008 was
not for amending the priority date. It was only for correcting
typographical errors. It was wrongly docked as Form 18 in the computer
of the Petitioner's attorney. As far as the Office of the CoP was concerned,
that application would have been treated as one under Form 13. Going by
the affidavit of Mr. Tony Mon George, the Petitioner's attorney knew that
it had, on 22nd August 2008, only filed an application for amendment of
typographical errors. Even if that application had been allowed, the
priority date of the application would have remained as 9th February
2006. Therefore, the deadline for filing the RFE would have continued to
be 9th February 2010. Since, in any event, no RFE was filed before the
expiry of the deadline in terms of Section 11-B(4) of the Act, the patent
th
application stood withdrawn after 9 February 2010.
25. 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 grant of 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. In other words, it is not possible for this Court to accept the
submission of the learned Senior counsel for the Petitioner that the time-
limits under Section 11-B(1) of the Act read with Rule 24-B of the Rules,
notwithstanding Section 11-B(4) of the Act, are merely ‘directory’ and not
mandatory. In fact, the wording of Section 11-B(4) of the Act underscores
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 37 of 42

the mandatory nature of the time limit for filing an RFE in terms of Section
11-B(1) of the Act read with Rule 24-B of the Rules.
xxx xxx xxx
27. Merely because there is no time limit prescribed for filing an
application for amendment of the priority date, it does not mean that such
application can be filed even after a patent application ceases to exist in
law. Once an application is deemed to have been withdrawn by an
applicant in terms of Section 11-B(4) of the Act, the CoP cannot entertain
an application for amending any portion of such application. It is not
possible to accept the submission of the learned Senior counsel for the
Petitioner that the CoP is bound to allow an amendment at any time, even
after the deemed withdrawal of such application, and that once such
amendment is allowed it would relate back to the date of the filing of the
application and thereby revive the application. This submission is contrary
to the scheme of the Act and Rules. Also, in view of what has been stated
nd
by the DCoP in the email of 2 February 2011 there is a doubt whether
an applicant can seek to amend the priority date at its sweet will to any
date of its choice. However, for the purposes of the present case, it is
beyond doubt that the CoP could not have, after the deemed withdrawal of
th
the Petitioner's patent application on 9 February 2010, permitted it to
amend the priority date of such application.
28. This Court is of the view that the decisions in Ferid Allani v. Union of
India and Telefonaktiebolaget LM Ericsson (Publ) v. Union of India were
rendered in a different factual context and do not aid the Petitioner's
submissions. The Petitioners there were in correspondence with the Office
of the CoP in relation to the defects pointed out in their respective patent
applications and had in fact made requests for oral hearing. In those
circumstances, this Court held that those Petitioners could not be held to
have abandoned their claims for the purposes of Section 21 of the Act. As
far as the present case is concerned, the Petitioner missed the deadline of
9th February 2010 for filing an RFE. It realised the error much later and
on 28th October 2010, filed an application for amending the priority date
by which time the patent application itself ceased to exist. The decisions of
the Commissioner of Patents and Trademarks, USA in Re Katrapat, AG 6
U.S.P.Q. 2 D (BNA) 1863 and Re Application of Ong, et al (Application
No. 11/754, 832) are also of no assistance since the patent law regime in
our country is governed by the Act and Rules which in themselves
constitute a complete code.”
29. The argument that Appellant had disclaimed the first/earliest priority
date at the threshold stage and which is really the heart of the dispute in this
case, is flawed and cannot be accepted. At the time of filing the application,
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 38 of 42

as noted above, Appellant did not file any document or formal request to
disclaim the first priority date and in fact this date does not even find
mention in Form-1 on a presumption and/or advise that there is an automatic
disclaimer. Respondent has categorically stated that no request was made to
seek disclaimer at the time of filing the application and Appellant has not
placed on record even a shred of material to traverse this stand. The first
request for claiming disclaimer and amendment of first priority date came
only through Form-13 on 28.06.2024 along with a petition under Rule 137.
Respondent has rightly held that Form-1 does not mention the first PCT
priority i.e., US 60/896,458 dated 22.03.2007 and thus there is no scope of
amendment and consequently, for condoning irregularity in filing Form-13
wherein the Appellant stated: “ We are hereby submitting a request as per
section 57(5) for voluntarily amending the date of priority claimed in the
present application by way of disclaimer, correction and explanation. We
request to allow disclaiming the earliest PCT priority (US 60/896,458 dated
22.03.2007) and consider the earliest priority claimed (i.e US 60/994,902
dated 20.09.2007) in the present application ”. Hence, in my view,
Appellant cannot be permitted to disclaim the first date and seek amendment
of priority date in the given facts and circumvent the missed deadlines for:
(a) filing national phase application; and (b) filing RFE. It is trite that what
cannot be done directly cannot be done indirectly and the impugned decision
cannot be faulted.
30. Furthermore, Respondent has rightly distinguished the judgments
relied upon by the Appellant. Case of European Union (supra) deals with
condonation of delay in filing responses to FERs, owing to which the patent
applications were deemed to have been abandoned under Section 21(1) of
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 39 of 42

1970 Act. Exercising writ jurisdiction under Articles 226 and 227 of the
Constitution under exceptional circumstances, Court held that if there was
negligence on the part of patent agents, delay in filing responses to FERs in
given facts and circumstances can be condoned. Respondent has correctly
captured the applicable part of the judgment, where it was held that
timelines for entry into national phase and for filing RFEs fall under the
category of ‘non-extendable deadlines’ and in this context referred to some
passages from the judgment, which are extracted hereunder:-
“49. It is clear that in the prosecution of patent applications, deadlines
fixed in the Act read with the Rules fall into two categories:
i. Deadlines which can be extended.
ii. Deadlines which cannot be extended.
50. In the opinion of this Court, patent agents are expected to know of
which deadlines are extendable and which are not extendable. Non-
extendable deadlines include inter alia-
• deadlines relating to entry of the application into the national phase,
• timelines for filing of request for examination,
• timelines for putting an application in order for grant etc.,
xxx xxx xxx
59. Therefore, the question that arises is whether this Court while
exercising writ jurisdiction under Article 226 and 227 ought to condone
the delay and restore the patent applications of the Petitioner.
xxx xxx xxx
62. In view of the fact that no fault can be attributed to the Applicant, this
Court is of the opinion that the Applicant ought not to be made to suffer.
However, there is a word of caution that this Court would like to add in
this regard. The intention of the Legislature in Rule 138 of the Rules
cannot be ignored by the Controller, nor can one ignore the express
language of Section 21(1) of the Act, which mandates a deemed
abandonment in case of non-compliance with the requirements imposed
under the Act. It is only in extraordinary cases, while exercising writ
jurisdiction, that the Court may consider being flexible, and this would
depend on the facts of each case as to whether a condonation ought to be
given at all.
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 40 of 42

xxx xxx xxx
64. In view of the judicial decisions cited above as also in the spirit of the
rd
Parliamentary Standing Committee's report dated 23 July, 2021, this
Court is of the opinion that the present two applications would fall in the
category of exceptional circumstances, owing to the peculiar facts where
the response to the FERs deserve to be taken on record. Accordingly, it is
directed that the response to the FER shall be taken on record by the
patent office. The application nos. 11123/DELNP/2013 and no.
3466/DELNP/2013 shall be restored to their original position. The
examination of the said patent shall now be proceeded with by the patent
office in accordance with the Act and the Rules. The same shall be
concluded within a period of six months.”
31. Respondent referred to the cited judgment in Bry Air prokon (supra)
and distinguished the same on facts and rightly so, as in that case the Court
permitted the Petitioners to file requests for restoration of the patents for the
extraordinary circumstances shown therein. This judgement has nothing to
do with extending timelines for entry in national phase and/or filing RFEs,
which is the case here. Respondent also correctly distinguished the judgment
in Nokia Corporation (supra), which essentially dealt with interpretation of
Rule 138 and Court held that application for extension is to be filed within
one month after expiry of prescribed time under Rule 20 and in case an
application is moved for extension of time by one month or shorter period, it
is to be decided on merit taking into consideration facts of the case. In the
instant case, Rule 138 was neither invoked nor is applicable with a delay of
over four months. The cited judgment in Tryton Medical Inc. (supra),
passed by IPAB was also dealt with and it was held that the case pertained to
extension by one month only to file national phase application to meet the
delay caused due to docketing/technical failure of docketing system. Having
distinguished these judgments, Respondent followed the right path and
referred to and relied on the judgment in Nippon Steel (supra), where this
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 41 of 42

Court has categorically proscribed entertaining an application for
amendment of priority date after the patent application is deemed to be
withdrawn by force of Section 11B(4) of the 1970 Act.
32. Appellant’s reliance on one patent application which was allowed in
the past is also misconceived as the facts therein were different from this
case, especially, on omission of full disclosure and amendment being sought
after 14 years. Ms. Nidhi Raman rightly urges that permitting the Appellant
to disclaim the first/earliest priority date basis the Form-13 filed on
28.06.2024 would be against the provisions of the 1970 Act and 2003 Rules
as also the aforementioned judicial precedents on the subject and would
open floodgates and encourage parties to follow the path of seeking
disclaimers years after mandatory deadlines are missed. Respondent has
treated the patent application as deemed withdrawn by the impugned order,
owing to non-filing of the application within 31 months from first/earliest
priority date and non-filing of RFE within 48 months and this Court finds no
infirmity in the order, warranting interference. The argument of the
Appellant that the invention is an important invention in public interest and
moreover, non-revival of the application by a disclaimer will seriously
prejudice the Appellant’s right, while no prejudice will be caused to any
other party, appeals on the first blush but cannot be accepted in light of
statutory proscriptions, mandatory timelines and the judgments
aforementioned.
33. The appeal is accordingly dismissed being devoid of merits.


JYOTI SINGH, J.
MAY _18_,2026 /YA
Signature Not Verified
Digitally Signed
By:SAHIL SHARMA
Signing Date:20.05.2026
19:31:38
C.A.(COMM.IPD-PAT) 5/2025 Page 42 of 42