Patent application cannot be deemed abandoned without effective communication of the examination report, Delhi High Court rules

Tetra Technologies’ Indian national-phase patent application was treated as abandoned under Section 21(1) of the Patents Act, 1970, after the applicant did not respond to a First Examination Report (FER) said to have been issued by email on 28 October 2021.

The petitioner denied receiving the FER and relied on screenshots of the relevant email inbox.

After discovering the abandonment on 25 April 2023, it pursued the matter with the Patent Office and filed a petition seeking re-issuance of the FER, which remained undecided.

The respondents relied on their IT records showing dispatch to the email address provided in the application and argued that the prescribed period for responding had expired.

1. Whether the application could be treated as deemed abandoned under Section 21(1) when the petitioner disputed receipt of the FER and the respondents showed dispatch but not delivery.

2. Whether the petitioner was entitled to revival of the application and a fresh opportunity to respond to the FER.

Section 21(1) of the Patents Act provides for deemed abandonment if the applicant fails to meet the applicable requirements within the prescribed period, which runs from the date the first statement of objections is forwarded to the applicant.

Rules 5 and 6(3) of the Patents Rules, 2003 require an address for service, including postal and email addresses, and permit authenticated electronic communication; Rule 6(4) treats dispatch as the date of communication, while Rule 6(5) recognises that a communication may be delayed in reaching its recipient.

Rules 24B(5) and 24B(6) provide the response period and a limited extension.

The Court applied the principle that a legal fiction must not be extended beyond its purpose (Bengal Immunity Co. Ltd. v. State of Bihar); that abandonment requires conduct supporting the inference of an intention to abandon (Telefonaktiebolaget LM Ericsson (Publ) v. Union of India and Ferid Allani v. Union of India); and that notice is a fundamental element of natural justice (Uma Nath Pandey v. State of U.P., quoting Canara Bank v. V.K. Awasthy).

It also relied on Saurav Chaudhary v. Union of India for the proposition that website availability alone may not establish notice of an FER, and The European Union v. Union of India concerning the Court’s limited power to grant relief in exceptional cases involving alleged abandonment.

The Court held that Section 21(1)’s deemed-abandonment consequence presupposes that the FER was effectively communicated to the applicant; proof that an email was dispatched did not, in the circumstances, establish that it reached the address for service.

The petitioner had supplied both postal and email addresses, and its inbox screenshots supported its claim of non-receipt.

The respondents did not establish delivery or show that the FER had also been sent by post; the dispatch record and system-generated email, which contained a disclaimer that its information was not valid for legal proceedings, were insufficient to justify abandonment.

The petitioner’s timely entry into the national phase, request for examination, and subsequent efforts to pursue the application were also inconsistent with an intention to abandon it.

In these circumstances, the unresolved request for re-issuance and the absence of an effective opportunity to respond reinforced the need to set aside the abandonment decision.

The respondents were directed to furnish the FER dated 28 October 2021 to the petitioner’s patent agent, or another address notified by the petitioner, by both postal and email service within one week.

The petitioner was granted eight weeks from the date of judgment to respond; if it did so, the application was to be processed to its conclusion expeditiously and in accordance with law.

The Court expressed no opinion on the merits of the patent application.