Certain offices such as patent office universally requires that the processes involved in the process or proceeding related to the patent applications are subjected to statutory time line restrictions. Missing of such time lines is fatal for the patent applications or proceedings initiated by third party as the power to condone the delay at times is not available in certain cases. However, in situations such as war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason there is every possibility that the applicants may miss the time lines. In such a situation, the applicant may wait for the prevailing situation to end and seek a condonation of delay from the patent office. In India, Patent Rule 6(6), which covers these situations, is reproduced below-
(6) Without prejudice to sub-rule (5) and notwithstanding anything contained in sub-rule (2) of rule 138, the Controller may condone the delay in transmitting or resubmitting a document to the patent office or performing any act by a party, if a petition for such condonation of delay is made by the party to the Controller along with a statement regarding the circumstances of the fact and evidence in support of the statement, to the satisfaction of the Controller, that the delay was due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason in the locality where the party resides or has place of business, and that such situation was of such severity that it disrupted the normal communication in that area and that the relevant action was taken as soon as reasonably possible not later than one month from the date when such situation had ceased to exist: Provided that the delay condoned by the Controller shall not exceed the period for which the national emergency
This rule was introduced in 2017 to cover the situation where there is a communication breakdown for reason of war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason. Since lockdown have been imposed in many States in India to prevent coronavirus epidemic, Indian IP offices should also take measures to minimise its impact on its users. The Indian Trademark Registry issued notification to suspend all hearings related to trademark matters between 17 March and 15 April for rescheduling in due course. There is an urgent need for Indian IP office to extend all deadlines for users and businesses affected by lockdowns. If feasible, the measures may include the automatic extension of time limits when IP office is not open to the public. Best option is to provide facility to all the employees to work from home to minimise the impact on the users. Although some patents law firms in India are equipped with work from home facility yet where the applicant would missed the timelines, he would be required to seek the condonation of delay as contemplated under new Patent rule 6(6). All the applicants are advised to seek expert opinion in this matter. Many national IP offices have taken the requisite measures to ensure that the user impact is nullified. Indian patent should also take necessary steps to reassure the users that the impact of the missed time lines due to lockdown will not affect the rights of the patent applicants or the rights of others in matters related thereto. For now, all IP users are requested to keep track of IP office alerts. While IP offices like UK, China, Italian IP Office (UIBM), Benelux IP Office and many others national IP offices have taken proactive steps to help ensure its users to remain unaffected by such lockdowns others have urged the users to use digital or electronic means to meet deadlines. Though Indian patent rules have provisions, which provide recourse to seek condonation of delay but it would require additional work for keeping track of every lapsing deadline. Since this work of filing for condonation of delay in each case will be voluminous, it would unnecessary put burden on the applicants, patent law firms and patent office. However, if an executive order is issued then such a burden could be avoided, as the deadline would automatically stand extended to the date mentioned in the executive order. Incidentally, the affected applicants would not be required to file a request to the office for the condonation of delay under rule 6(6) for each missed time line due to the lockdown. Such an order or notification of Indian patent office would minimise the work of the office as well as the users. This anomalous situation need to be addressed appropriately by the Indian Patent Office on urgent basis for the benefits of all the users.
Natural calamity and patent office time lines by DPS Parmar
Article was 1st published in the Lexology.