In Deakin University v. The Controller General of Patents, Designs and Trade Marks [WP(IPD) No. 22 of 2026], the High Court of Judicature at Madras (Intellectual Property Division) reaffirmed that a bona fide inventor cannot be penalized with statutory patent forfeiture due to the gross negligence and non-communication of their patent agent. Presided over by The Hon’ble Dr. Justice A.D. Maria Clete, the Court exercised its extraordinary constitutional writ jurisdiction under Article 226 of the Constitution of India to restore Indian Patent Application No. 201747029902 (titled ‘Firefighter Training Unit’), condoned the delay in submitting the First Examination Report (FER) response, and directed the Patent Office to take the response on record and proceed with examination on the merits.
| Disputed Subject Matter | Indian Patent Application No. 201747029902 for ‘Firefighter Training Unit’ (PCT National Phase, priority 20.02.2015); Deemed abandonment under Section 21(1) of the Patents Act, 1970. |
|---|---|
| Petitioner’s Case | Deakin University diligently gave timely instructions to its former patent agent (STRAT IP) to seek extension and file reply to FER dated 25.11.2020. The agent assured the client that time stood extended under Supreme Court pandemic limitation orders, but subsequently went silent and failed to file the reply. Upon discovering abandonment in November 2022, Deakin changed agents and filed a Rule 137 petition with full reply on 03.09.2024. |
| Respondent’s Defense | The Patent Office argued that time limits under Section 21(1) and Rule 24B are strictly mandatory, the Controller has no statutory power of enlargement, the Supreme Court pandemic extensions expired in May 2022, and the writ petition was premature because the Rule 137 petition had not been formally rejected. |
| Governing Law and Authorities | Section 21(1), Patents Act, 1970; Rule 24B, Rule 137, Patents Rules, 2003; Article 226 of the Constitution of India; The European Union v. Union of India (2022:DHC:2301); Bry-Air Prokon Sagl v. Union of India (2022/DHC/004439); NTT DoCoMo Inc. v. Assistant Controller of Patents and Designs (W.P. No. 6594/2013); Rafiq v. Munshilal. |
| Decisive Holding and Relief | Writ petition allowed. Patent Application No. 201747029902 restored to original status. Delay in FER response condoned. Patent Office directed to record restored status within four weeks and complete examination within six months. |
Factual Matrix and Procedural Trajectory of the Dispute
Struggling to understand Patent Law? Read our complete Patent Law Guide.
Origin of the Invention and PCT National Phase Filing
Deakin University, an Australian public research institution, developed an innovative firefighter training unit designed to simulate controlled fire extinguishing environments for hands-on personnel training. To secure territorial patent protection in India, the university filed international patent application PCT/AU2016/050115, which claimed priority from an Australian provisional application dated February 20, 2015. Through its Australian instructing attorneys, Phillips Ormonde Fitzpatrick (POF), the university engaged an Indian intellectual property firm, Strategic Intellectual Property Solutions (STRAT IP), located in Bengaluru. STRAT IP filed the Indian national phase application on August 23, 2017, bearing Application No. 201747029902.
Issuance of the First Examination Report and Agent Default
The Indian Patent Office examined the application and issued an FER on November 25, 2020. Under the statutory framework, the deadline to file a response was initially six months, extendable by an additional three months upon paying prescribed fees. POF instructed STRAT IP to secure the three-month extension. However, STRAT IP responded that all statutory deadlines stood automatically enlarged pursuant to orders passed by the Supreme Court of India in the Suo Motu COVID-19 limitation extension proceedings, advising that no immediate extension application was required. Following this correspondence, STRAT IP ceased all communication, failing to notify the foreign client or instructing attorneys about the eventual expiration of the Supreme Court extension window.
Discovery of Deemed Abandonment and Remedial Action
Upon realizing the communication breakdown, POF transmitted detailed drafting instructions to STRAT IP in August 2022 and issued subsequent chaser emails in November 2022. Receiving no response, POF engaged a new firm of Indian patent attorneys, Groser & Groser, in late November 2022. Groser & Groser discovered that the Patent Office had treated the application as deemed abandoned under Section 21(1) of the Patents Act, 1970. The new attorneys immediately filed Form 13 with a fresh General Power of Authority on December 22, 2022, and subsequently filed a petition under Rule 137 on September 3, 2024, accompanied by the complete FER response and supporting exhibits. When the Patent Office delayed adjudicating the Rule 137 petition despite repeated formal reminders, Deakin University invoked the extraordinary writ jurisdiction of the Madras High Court.
Primary Statutory Framework and Jurisdictional Thresholds
Section 21(1) of the Patents Act and Rule 24B Timelines
Section 21(1) of the Patents Act, 1970 dictates that an application shall be deemed abandoned unless the applicant puts the application in order for grant within the prescribed period following the issuance of the FER. Rule 24B of the Patents Rules, 2003 fixes this period at six months from the date of FER issuance, with a discretionary extension of three months available upon request under sub-rule (6). The statutory language is rigid, stripping the Controller of Patents of any inherent or discretionary authority to condone delays once the combined maximum period of nine months has elapsed.
Rule 137 and the Limitations of Administrative Remedies
Rule 137 of the Patents Rules, 2003 permits the Controller to amend any document or condone any irregularity in procedure in cases where no specific provision is made in the rules. However, administrative practice and judicial precedent have created uncertainty regarding whether Rule 137 can be invoked to overcome the substantive deemed abandonment triggered under Section 21(1). Because the Controller maintains a restrictive view of their own powers, applications submitted under Rule 137 frequently languish indefinitely without formal adjudication, creating severe prejudice to patent applicants.
Rival Submissions and Strategic Contentions
Petitioner Arguments on Agency and Lack of Animus Derelinquendi
Senior Counsel for Deakin University argued that a foreign applicant relying entirely on registered Indian patent agents should not suffer forfeiture of substantive intellectual property rights due to professional misconduct or gross negligence. Citing foundational administrative and civil jurisprudence, counsel submitted that abandonment requires a conscious and intentional relinquishment of rights (animus derelinquendi). Because Deakin University consistently pursued the application and maintained active correspondence through its foreign attorneys, no intent to abandon existed. Counsel relied on judicial precedents from the Delhi High Court and Madras High Court establishing that patent agent defaults must be equated with advocate defaults, shielding litigants from procedural fatalism.
Respondent Defense on Mandatory Timelines and Prematurity
The Central Government Standing Counsel for the Patent Office countered that the statutory timelines under Section 21(1) and Rule 24B are absolute. Even after accounting for the extended limitation periods sanctioned by the Supreme Court during the pandemic, the final deadline to file the FER response expired by mid-2022, whereas the actual response was lodged only on September 3, 2024. Furthermore, the respondent argued that the writ petition was premature because the Rule 137 petition filed by the new attorneys remained pending before the Controller and had not been formally rejected.
Judicial Reasoning and Ratio Decidendi
Harmonizing Statutory Rigidity with Constitutional Remedial Power
The High Court acknowledged the statutory constraints imposed upon the Controller by Section 21(1) and Rule 24B. The Court confirmed that the Controller possesses no inherent statutory power to enlarge the nine-month window for responding to an FER. However, the Court drew a decisive distinction between administrative authority and constitutional writ jurisdiction.
“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. But it does not follow that this Court is powerless. 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 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.”
The Hon’ble Dr. Justice A.D. Maria Clete, High Court of Judicature at Madras
Application of Agent Default Doctrine and Absence of Prejudice
The Court examined the evidentiary record and established that Deakin University and its foreign attorneys exercised continuous diligence. The breakdown occurred exclusively due to STRAT IP failing to apprise the client of the shifting limitation timelines following the withdrawal of pandemic concessions. Invoking established doctrines protecting litigants from professional negligence, the Court ruled that the fault of a patent agent cannot bind a diligent applicant. Furthermore, the Court observed that restoring the application causes zero legal prejudice to third parties or the Patent Office, as restoration merely revives the examination process on merits rather than granting the patent outright.
“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. This Court is therefore satisfied that this is a fit case for exercise of the writ jurisdiction.”
The Hon’ble Dr. Justice A.D. Maria Clete, High Court of Judicature at Madras
Section 21(1) of the Patents Act, 1970 read with Rule 24B of the Patents Rules, 2003 mandates that an applicant must comply with all requirements of the First Examination Report (FER) within the prescribed statutory period, failing which the application is deemed abandoned. While the Patent Controller lacks inherent statutory discretion to extend these mandatory timelines once exhausted, the constitutional writ jurisdiction of the High Court under Article 226 remains plenary. Where an applicant never exhibited an intention to abandon the application (animus derelinquendi) and the failure to file an FER response was caused by the gross dereliction of duty of the patent agent, the High Court possesses full authority to condone the delay and restore the application.
Also Read: Patents vs Trade Secrets in India: Strategic Choices, Reverse Engineering, and the Draft Bill 2024
Practical Commercial Implications & Strategic Guidance for IP Practitioners
Direct Takeaways for Corporate Counsel and Foreign Patent Owners
This ruling provides vital protective jurisprudence for international patent applicants utilizing Indian national phase filings. Foreign corporations and academic institutions must recognize that while Indian patent agents act as mandatory statutory conduits, ultimate docketing oversight should not be outsourced blindly. Corporate IP management teams should institute independent docket audits and direct-client notification protocols with local patent counsel to prevent rogue agent defaults.
Procedural Safeguards and Writ Strategy
When patent applications suffer deemed abandonment due to professional misconduct, applicants are advised to act promptly upon discovery by replacing defaulting agents and placing complete remedial papers on record. If the Patent Office delays adjudication of curative petitions under Rule 137, writ petitions under Article 226 represent an effective judicial remedy. As demonstrated in this case, High Courts within the Intellectual Property Division framework will readily bypass administrative inertia where the applicant proves continuous active intent and lack of culpable delay.
