Deakin University v Controller General of Patents, Designs and Trade Marks (2026)

Summary

The petitioner’s “researchers developed a unit that simulates the use of a fire extinguishing system, so that firefighters can be trained hands-on before they face real fires” (para 1). “The Patent Office raised objections in its First Examination Report (‘FER’) dated 25.11.2020. No reply was filed within the time allowed, and the application was therefore treated as deemed abandoned under Section 21(1) of the Patents Act, 1970” (para 1). Its Indian patent agents, STRAT IP (“Strategic Intellectual Property Solutions, Bangalore”), had “replied that all deadlines stood automatically extended by the orders of the Hon’ble Supreme Court passed during the COVID-19 pandemic” (para 4) and then “stopped communicating altogether” (para 5). The petitioner “later asked the respondent, by a petition under Rule 137 of the Patents Rules, 2003” (“the Rules”) “to revive the application, and filed its reply to the FER along with it. That petition has not been decided.” (para 1)

The Court held that the time limits “are mandatory, and the Controller has no power to extend them” but that “it does not follow that this Court is powerless” (para 14), and that the power “is to be used sparingly, and only where the applicant shows from the record that it never gave up the application and that its loss was the result of its agent’s default” (para 14). “Both are shown here.” (para 15) “In the result, the writ petition is allowed” and the application “is restored to the position it occupied before it was treated as deemed abandoned under Section 21(1) of the Patents Act, 1970. The delay in replying to the First Examination Report dated 25.11.2020 is condoned.” (para 18)

What the court decided

1. The point for decision. “whether this is a fit case for this Court, under Article 226 of the Constitution of India, to restore an application which the law treats as deemed abandoned, to condone the delay in replying to the FER” (“First Examination Report”) “, and to direct the reply to be taken on record.” (para 13)
2. The time limits. “Under Section 21(1) of the Act, read with Rules 24B(5) and 24B(6), the reply to the FER had to be filed within six months, extendable by three months. These time limits are mandatory, and the Controller has no power to extend them. The respondent is therefore right that the time could not be extended by the Patent Office.” (para 14)
3. Restoration by the writ court. “But it does not follow that this Court is powerless. The Delhi High Court in The European Union (supra) and in Bry-Air (supra) has held that, in extraordinary cases, a writ court may restore such an application where the applicant never intended to abandon it and the loss was caused by the default of its patent agent.” The Court added: “This Court took the same view in NTT DoCoMo (supra).” (para 14)
4. The patent agent’s mistake. “The mistake of a patent agent is treated like the mistake of an advocate, for which a litigant ought not to suffer, and abandonment, being a conscious act, cannot be presumed.” (para 14)
5. A power used sparingly. “since the words of Section 21(1) cannot be ignored, the power is to be used sparingly, and only where the applicant shows from the record that it never gave up the application and that its loss was the result of its agent’s default.” (para 14)
6. The agent’s default on the record. “STRAT IP, the registered agent to whom the FER was sent, had told its client on 22.05.2021 that time stood extended. It never informed its client when the Hon’ble Supreme Court’s orders on limitation later changed, and it neither acted on nor acknowledged the instructions it received.” and “The respondent does not dispute this correspondence, and its own counter states that it was STRAT IP that did not file the reply.” (para 15)
7. Delay after the loss. “the delay after 25.11.2022 came after the loss and did not cause it. Throughout, the petitioner kept taking steps to pursue the application. Nothing on record shows that it ever gave it up.” (para 16)
8. No prejudice; no remand. “Restoration only revives the examination of the application on its merits; it does not grant a patent, and no prejudice to the respondent or to any third party has been shown. Since the Controller has no power to extend the time, sending the matter back to decide the Rule 137 petition, which has remained pending since 03.09.2024 despite reminders, would serve no purpose.” (para 17)
9. Disposition. “The respondent shall take on record the reply to the First Examination Report dated 02.09.2024, filed with the petition under Rule 137 on 03.09.2024” and “shall thereafter examine the application in accordance with the Patents Act, 1970 and the Patents Rules, 2003, and shall endeavour to complete the examination within six months.” (para 18)

What the court did not decide

“Nothing in this order is an expression of opinion on whether the invention is patentable.” (para 18)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 17 October 2026.