Putting the Application in Order

1An application for a patent shall be deemed to have been abandoned if the applicant fails to comply with all the requirements imposed under the Patents Act within 6 months from the date on which the first statement of objection was issued to the applicant. (Patents Rules 2003, r 24B(5).) This period may be extended by another three months if a request is made before the expiry of the period. (Patents Rules 2003, r 24B(6) and Form 4.) The objections raised may pertain to the application or the complete specification or other documents. The expression ‘other documents’ will include any document filed as part of a convention application or an application filed under the Patents Cooperation Treaty designating India. (Patents Act 1970, s 21(1).) An applicant shall not be deemed to have complied with the requirements under the Patents Act unless he has re-filed the said documents or proves to the satisfaction of the Controller that he is unable to re-file the said documents for reasons beyond his control. If the documents returned to the applicant during prosecution upon the requirement that they must be refiled before the end of the prescribed period or the extended period, the application would be deemed to have been abandoned if the said documents are not returned within the stipulated time. (See D’s Application [1974] FSR 291, p 298, (1975) RPC 447, p 453.)

2The expression ‘deemed to have’ means ’treated for the purposes of this Act as if’. (See Freeman and Heatrae Ltd’s Application (1959) RPC 25, p 28; V’s Application (1981) RPC 245, p 251.) An application shall not be deemed to have been abandoned so long as there is a possibility of the applicant to comply with the requirements. (See Associated British Combustion Ltd’s Application (1978) RPC 581, p 591, [1978] FSR 289.) The Controller will have no power to revive such an application. (See T’s Application [1982] FSR 172 (CA). The Comptroller did not have discretion to revive the application under r 100 of the UK Patents Rules 1978.)

3Section 21(2) provides for extension of time for putting the application in order in cases where an appeal is pending in respect of the application for the patent. The High Court may, on an application made by the applicant, extend the period for compliance as it deems fit. (Patents Act 1970, s 21(2).) The applicant shall comply with the requirements within such period as granted by the High Court. The Controller may also extend the time to such further period, if the time within which an appeal mentioned under s 21(2) may be instituted has not expired. (Ibid, s 21(3).)