Delhi High Court Rejects Neurocentria Plea To Alter Priority Date To Overcome Missed Patent Deadlines

The Delhi High Court on 18 May dismissed the appeal filed by US-based pharmaceutical company Neurocentria Inc and upheld the October 2024 order of the Deputy Controller of Patents treating the Indian patent application as deemed withdrawn.

Justice Jyoti Singh held that a patent applicant cannot seek to retrospectively disclaim its earliest priority date through a belated amendment in order to bypass mandatory statutory timelines under the Patents Act, 1970, including deadlines for national phase entry and filing of a Request for Examination. She observed:

“Appellant cannot be permitted to disclaim the first date and seek amendment of priority date in the given facts and circumvent the missed deadlines for: (a) filing national phase application; and (b) filing RFE. It is trite that what cannot be done directly cannot be done indirectly and the impugned decision cannot be faulted.”

The dispute arose from Neurocentria's PCT-based application filed in India in 2010 for “Magnesium Compositions and Uses Thereof”, which claimed three US priority dates, the earliest being 22 March 2007.

The national phase entry deadline, calculated from the earliest priority date, expired on 22 October 2009, but the application was filed on 15 February 2010, nearly four months late. The Request for Examination, due by 22 March 2011, was filed in September 2011, also beyond the prescribed period.

Neurocentria contended that its first patent agent had, on instructions, disclaimed the earliest priority date and proceeded on the second priority date of 20 September 2007, which would have brought both filings within limitation. It argued that the lapse occurred due to agent negligence and relied on Section 57(5) of the Patents Act, which permits amendments to disclaim priority claims, along with precedent protecting applicants from agent errors.

The Patent Office rejected the 2024 Form-13 amendment application, noting that no formal disclaimer of the earliest priority date existed at the time of filing in 2010 and that the amendment was sought 14 years later only after the defect was flagged in a First Examination Report issued in 2018.

Justice Singh upheld this view, finding that the omission of the earliest priority date in Form-1 was not accompanied by any contemporaneous disclosure or formal disclaimer. She also noted that the belated amendment appeared to be an attempt to overcome missed statutory timelines. She held:

“Question is who benefited from the omission and the answer to this is a strong indicator that non-disclosure of the earliest date was to overcome the timelines and perhaps a well thought of initiative.”

The Court further held that the timelines for national phase entry under Rule 20(4)(i) and for filing the Request for Examination under Rule 24B are mandatory and non-extendable.

Accordingly, the High Court dismissed the appeal.