UncategorizedExtension of Patent Procedural Timelines in the wake of Covid-19

July 15, 20200
Soon after the declaration of COVID-19 as a pandemic by the World Health Organization in March, 2020; the coronavirus outbreak spread rapidly throughout India. The Indian Government introduced lockdown measures soon after such declaration, to reduce unnecessary movement amongst the masses and curb the spread of the highly contagious disease through effective social distancing.
The lockdown measures implemented introduced strict guidelines to be followed, which majorly entailed staying at home and avoiding all kinds of travel. With restrictions on travel; all offices, factories and workplaces were shut down to abide by the guidelines, which resulted in untimely delays for administrative and procedural functions in all aspects of intellectual property rights protection. One such domain under IPR affected severely by the pandemic and the restrictive measures imposed to control it, is Patent protection.
Patents refer to rights granted to the owner of an invention, by the government of the country, to exploit such rights in a monopolistic manner through usage, manufacture and marketing the invention. Patent rights are granted for a period of 20 years, provided that such inventions satisfy conditions for patentability under the Patents Act, 1970(“the Act”).
The Act prescribes procedure and requirements to be followed in order to apply for and obtain the patent protection, including grant of patent, payment of renewal fee, restoration of patent, licensing and assignment, compulsory licensing, patent infringement, etc.
Additionally, the Act also prescribes specific time period within which the stakeholders are required to comply with the requisites at different stages of patent registration. If such time period lapses, the patent application may be abandoned or may require additional fees for restoration. Therefore, it is essential that the stakeholders adhere to such timelines to avoid unnecessary expenses and complications.
In the current scenario, it becomes evident that stakeholders would not be able to comply with the prescribed timelines due to the lockdown measures implemented nationwide. Considering such circumstances, the Supreme Court declared that the limitation period under different laws would stand extended till further notice.
Pursuant to this order, the Office of Controller General of Patents, Designs and Trade Marks (“CGPDTM”) issued various Notices prescribing deadlines for proceedings falling due during the lockdown period. These notices were brought under challenge before the High Court of Delhi as they were contrary to the SC Order and would put forth exceptional difficulties for the stakeholders.
A. Supreme Court of India Order dated 23.03.2020
The Supreme Court took suo moto cognizance of the situation caused due to the COVID-19 pandemic in the Order titled In Re: Cognizance for Extension of Limitation, Suo Motu Writ Petition (Civil) No.3/2020. The Court took into account the challenges faced by the country as a result of Covid-19 virus and consequent difficulties which litigants would have to withstand for filing all proceedings including petitions, applications, suits, appeals within the limitation period prescribed by both general and special laws.
Through the suo moto Writ Petition, the Court observed that with effect from 15.03.2020, the period of limitation shall remain extended till further order(s) passed by the Supreme Court for all proceedings, irrespective of the limitation period specified under the general law or special laws whether condonable or not. Therefore, it is implied that litigants need not file an application for Condonation of Delay in case the limitation period has lapsed on or after 15.03.2020.
The Court further observed that such a measure was necessary to eliminate difficulties in filing proceedings, ensuring that litigants/lawyers are not required to physically file the proceedings in Courts and Tribunals across the country, including the Supreme Court. Nevertheless, this Order does not impose an overall suspension of the limitation period and the Order would be modified by the Court upon lifting of lockdown measures.
The Supreme Court exercised its power to enforce Orders for ensuring justice to matters pending before it, under Article 142 read with Article 141 of the Constitution of India, and declared that Order so passed shall be binding on all Courts/Tribunals and authorities in accordance to Article 141.
B. Public Notices issued by CGPDTM
1. Notice dated 25.03.2020
Upon commencement of lockdown by the Government of India and subsequent order of the Ministry of Home Affair relating to lockdown measures, all offices under the Office of CGPDTM were to remain closed till lifting of lockdown.
Therefore, the Office of CGPDTM announced that all due dates of timelines/periods would lie on the date of re-opening of offices, for completion of various acts/activities, filing of any reply/document, payment of fees, etc. regarding any IP applications, under different Intellectual Property Acts and Rules under the administration of CGPDTM.
2. Notice dated 15.04.2020
Pursuant to the extension of lockdown till 3rd May, 2020 as per the Order of MHA, a Public Notice was issued by the Office of CGPDTM stating that all the offices under CGPDTM would not be accessible to public physically, however e-filing services would remain active 24×7.
Hence, the relaxation provided in the Notice dated 25.03.2020 would be extended up to 03.05.2020.
3. Notice dated 04.05.2020
The Government further extended lockdown period for two more weeks, i.e. till 17.05.2020 as per the Order of MHA. As per the lockdown guidelines, the IP offices would remain functional with reduced strength but the movement of public and functioning of private offices in Red Zone would remain restricted.
The Order noted that all IP Offices in India lie within Red Zones and hence the timelines/periods prescribed under the IP Acts and Rules which fell due between the lockdown period, would be considered due on 18.05.2020, i.e. one day after the expiry of the lockdown period.
It was applicable for completion of acts/proceedings, filing of any reply/document, payment of fees, etc. in the matters of any IP applications within the administration of CGPDTM.
C. High Court of Delhi Order dated 11.05.2020
The High Court of Delhi, in the case of Intellectual Property Attorneys Association (IPAA) & Anr. v. The Controller General of patents, Designs and Trade Marks & Anr., W.P.(C) No.3059/2020 dealt with the writ petition challenging the CGPDTM Public Notice dated 04.05.2020.  The Court noted that the intent of the notice was to extend limitation which expires during lockdown till 18.05.2020.
The petitioner contended that the said notice was contrary to the Order of Supreme Court titled In Re: Cognizance for Extension of Limitation and that the Office of CGPDTM had imposed onerous burden on the litigants and lawyers as well regarding the cut-off date of 18.05.2020, i.e. one day after the lockdown would be lifted on 17.05.2020.
The Court agreed with the former contention of the petitioner, stating that no authority can act contrary to the Order of SC. It further noted that all authorities, irrespective of civil or judicial, located within India are required to act in accordance to the Orders of SC, as per Article 144 of the Constitution.
The Court concurred with the Petitioner that the protection granted under the SC order would commence from 15.03.2020, and not from 25.03.2020 as indicated in the Public Notice issued by CGPDTM. The Court also observed that the timeframe given for filings is very narrow and the CGPDTM had erred in providing such a short deadline.
Therefore, the HC ordered for suspension of operation of the public notice dated 04.05.2020 and directed the Office of CGPDTM to act in accordance with the SC Order dated 23.03.2020.
D. Public Notice issued by CGPDTM dated 18.05.2020
The Office of CGPDTM, citing the Orders of SC in Suo Motu Writ Petition (Civil) No(s). 3/2020 dated 23.3.2020 and 06.05.2020; the Order of HC in IPAA & Anr., vs. CGPDTM & Anr., and the Ministry of Home Affairs Order dated 17.05.2020 issuing guidelines for further lockdown, stated that functioning of work places had been permitted with necessary safeguards and that all the IP offices under the administration of CGPDTM continued to remain functional from 20.04.2020.
Taking into account the above Orders, the due dates falling due from 15.03.2020 to 17.05.2020, shall be 01.06.2020 for the completion of proceedings, filing of any reply/document, payment of fees, etc. relating to IP applications filed with the offices under CGPDTM administration.
It also stated that the notice shall not affect the rights of individuals or applicants seeking extension of time/condonation of delay for the applications under provisions of Acts and Rules.
E. High Court of Delhi Orders dated 21.05.2020 and 17.06.2020
Further application was filed in Intellectual Property Attorneys Association (IPAA) & Anr. v. The Controller General of patents, Designs and Trade Marks & Anr., W.P.(C) No.3059/2020 by the Petitioner for quashing of Public Notice dated 18.05.2020 and calling for restraint of the Respondents from acting on it.
The Petitioner contended that the said notice was in contravention to the Orders passed by the SC and the High Court of Delhi. Further, the deadline prescribed under the said notice would put the litigants and advocates under additional risks as they would be forced to step out and file proceedings physically to a skeletal staff working at the CGPDTM offices and the that the extension provided till 01.06.2020 is too narrow.
The Court held that the Order of SC is as much binding on the Respondent as on any Court or Tribunal and the same cannot be challenged by court/tribunal or authority. Therefore, it shall not be up to any Court, Tribunal or Authority to prescribe timelines on the limitation period, irrespective of special laws. Further, the Court ordered for stay of Public Notice dated 18.05.2020.
Vide Order dated 17.06.2020, the High Court of Delhi re-affirmed the previous Order of Stay of the impugned public notice dated 18.05.2020. The Court further ordered the Respondents to take necessary consequential actions for notifying the public about the same through issue of appropriate notifications on its website.
F. Public Notice issued by CGPDTM dated 19.06.2020
The Office of the CGPDTM in consonance with the order of the High Court of Delhi dated 17.06.2020 issued a Notice dated 19.06.2020 for the stay of Public Notice dated 18.05.2020.
With reference to the Order of the High Court of Delhi, the Public Notice dated 18.05.2020 stands withdrawn and the timelines/periods and due dates for completion of acts/proceedings, filing of reply/document, payment of fees, etc. falling due after 15.03.2020, shall be in accordance to the decision/order of the High Court of Delhi.
The Public Notice issued by the office of CGPDTM dated 19.06.2020 is a welcome move to take into account the hardships of litigants and advocates, finding it difficult to ensure filing and other compliances within due dates falling at the time of the global pandemic. The litigants are free to comply with such filing and procedural requirements through the e-portal of the Indian Patents Office.
However, there exist significant number of people who do not find it comfortable to rely on online modes and would prefer filing it physically through a known mode. Hence, the Orders passed by the Supreme Court and the Delhi High Court have favoured the litigants and been helpful for such people keeping in mind their preferences.
Moving forward, the completion of acts/proceedings, filing, etc. cannot be abandoned completely, neither can the public keep waiting for the pandemic to end to resume normal procedural activities. It is up to the judiciary and the CGPDTM Office to come up with methods for remote filing and completion of proceedings. The CGPDTM Office should develop a website which can undertake overall filing and completion of proceedings virtually, eliminating the requirement to visit the Patents Office physically.
It is evident that at today’s time and circumstances, internet facilitated activities are of utmost importance and the same should be adopted by the Patents Office, along with issue of guidelines and handbooks for proper usage of such internet facilities.
Further, the Office of CGPDTM should take into account the timelines prescribed by other countries, such as the United States or Japan for completion of IP proceedings and filings. The United Stated Patent and Trademark Office (USPTO) has provided a period of 1 month from lifting of lockdown for completion of such acts/proceedings, whereas the Japan Patents Office (JPO) has issued a flexible timeline for completion of acts beyond deadline for a period of 14 to 60 days.
Additionally, In case of COVID-19 related impediment, the affected party can request restoration of rights without the payment of additional fees within a period of 2 months of removal of the impediment.
The Indian Patents Office should refer to such timelines prescribed by various other countries which are in favour of the stakeholders and decide upon suitable timelines/deadlines considering the state of affairs in India.
At the onset of coronavirus pandemic, the Indian Government was quick to announce lockdown measures to prevent the spread of the disease through the masses. As the number of cases keep rising through the months, the government has resumed lockdown measures at places hit badly and lifted the lockdown at very few green zones. In view of the lockdown situation, the office of CGPDTM issued notices regarding the due dates and limitation period falling within the lockdown period.
However, these Notices were not reflective of the real situation in most Indian cities wherein strict lockdown measures are still in force. Further, the Public Notices issued were in contravention of the SC Order dated 23.03.2020 and subsequently the Order of High Court of Delhi. Therefore, the same was challenged by the Intellectual Property Attorneys Association (“IPAA”) before the High Court of Delhi, which ordered for stay of the Public Notices prescribing a specific and narrow timeline/deadline.
As a consequence, the Office of CGPDTM abiding by the Supreme Court and High Court of Delhi Orders vide Public Notice dated 19.06.2020 declared that all such timelines are to be extended till further orders of the High Court of Delhi.
Considering the rapid increase in cases of coronavirus throughout the country, it is difficult to predict when the lockdown measures would be completely lifted and hence the CGPDTM should introduce an e-portal for conclusive filing and completion of procedural acts.
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