Not Responding To System-Generated Email On Patent Objections Cannot Be Construed As Abandonment: Delhi High Court

The Delhi High Court has set aside the Patent Office's decision to abandon a Tetra Technologies patent application for failing to respond to objections raised in an examination report.

The court ruled that the application could not be treated as abandoned solely because the company failed to respond to a system-generated email notifying it of the First Examination Report, without proof that the email was delivered.

“Such an intimation, without more, cannot be the sole basis for visiting the applicant with the drastic consequence of abandonment,” Justice Purushaindra Kumar Kaurav ruled.

The court revived the application and gave the US-based company eight weeks to respond to the First Examination Report (FER). The Patent Office must send the report to the company's patent agent at both its postal and e-mail addresses within one week.

Tetra Technologies, Inc. filed its Indian national-phase patent application on May 11, 2020, through its patent agent, Jain & Partners. It provided a postal address in New Delhi and an e-mail address for service.

The Patent Office claimed that its records showed the FER had been sent to the e-mail address on October 28, 2021. When no reply was received within the prescribed period, the application was treated as abandoned under Section 21(1) of the Patents Act, 1970.

Tetra approached the High Court seeking revival of the application and further examination.

The company maintained that neither it nor its patent agent had received the e-mail. It learnt of the abandonment only on April 25, 2023, while checking the application's status on the official portal.

Between April and November 2023, its patent agent repeatedly e-mailed Patent Office officials. The responses stated that the FER had been “successfully sent”.

The company also raised the issue at Open House sessions in January and February 2024. It filed a petition on March 5, 2024, seeking re-issuance of the FER, but the Patent Office did not decide it.

The Patent Office relied on its IT database, which recorded transmission of the FER, and Rule 6(3) of the Patents Rules, 2003, which permits electronic communication.

The court observed that Section 21(1) links deemed abandonment to the date on which the first statement of objections is forwarded to the applicant. It ruled that abandonment “is, thus, founded upon the FER having been effectively communicated to the applicant at its address for service”.

The court also relied on the principle that abandonment requires a conscious act by the applicant indicating an intention to give up the application. That principle, it observed, “applies with greater force where the very receipt of the FER is in serious doubt”.

Although the Patents Rules permit electronic communication and treat the date of dispatch as the date of communication, Rule 6(5) allows the Controller to condone delays when a communication takes time to reach the recipient.

“The scheme, therefore, does not treat mere dispatch as conclusive of actual receipt,” the court observed.

Tetra submitted screenshots of its e-mail inbox for October 23 to 30, 2021, showing that the FER had not arrived. The court also noted that the Patent Office had produced no proof of delivery.

The court observed that the Patent Office could have sent the FER to the company's postal address. It could also have re-sent the report after Tetra complained that it had not received it.

The court noted that the company's March 2024 petition specifically raised non-receipt and sought re-issuance of the FER. However, the petition was neither decided nor followed by a hearing.

The company's repeated complaints received standard responses, including that “a duplicate FER cannot be issued in this case”.

The court found that Tetra's conduct was inconsistent with an intention to abandon the application. It had entered the national phase within the prescribed period, sought examination and persistently pursued the matter after discovering the abandonment.

Setting aside the decision, the court directed the Patent Office to restore the application and send the FER to the company's patent agent, or another address intimated by Tetra, at both postal and e-mail addresses within one week. Tetra was given eight weeks from the date of the judgment to reply.

The court clarified that it had not expressed any opinion on the merits of the patent application. It added that its directions were based on the peculiar facts of the case.

The petition was disposed of.