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Limitation Period for PCT-National Phase Applications

On September 23, 2022, when Koch Engineered Solutions LLC (“Koch”), through our firm, attempted to file four (4) National Phase applications in India, the official e-filing portal of the Indian Patent Office (“IPO”) did not accept the applications. This was unexpected for two reasons: one, it was not in line with the extension allowed by the Supreme Court of India in view of the COVID-19 pandemic vide order dated January 10, 2022 excluding the period from March 15, 2020 till February 28, 2022 while computing the limitation period and the balance period of limitation remaining as on October 3, 2021, if any, shall become available with effect from March 1, 2022 and the IPO’s own public notice dated January 18, 2022, giving effect to the order; and second, merely six days ago, on September 17, 2022 also after the expiration of the mandatory thirty-one (31) month period, when Koch had attempted filing to check if allowed, the e-filing portal was found open.

However, attempts to file the applications through the e-filing portal of the IPO failed. Attempts to convince the Patent Office that the filings should be allowed also failed. Ultimately, we filed petitions to request extensions. However, the Patent Office did not act on these petitions.

Koch approached the Hon’ble Delhi High Court (“DHC”) invoking its writ jurisdiction under Articles 226 and 227 of the Constitution of India, 1950 praying that a writ of mandamus or other similar or appropriate writ, or direction be issued, directing the IPO to (i) re-open the e-filing portal for filing the PCT National Phase applications, (ii) implement the order of the Supreme Court; and (iii) consider the petitions filed, and issue necessary orders in respect thereof. [Koch Engineered Solutions LLC v. CGPDTM W.P.(C.)-IPD Nos. 28/2022 – 31/2022]

The matter was first listed before Hon’ble Justice Ms. Jyoti Singh for hearing on November 2, 2022. In addition to narrating the fact situation of the instant case, Koch pertinently cited the order of the DHC, dated March 21, 2022, in Dr. Reddy’s Laboratories Limited & Ors. v. Controller General of Patents, Designs, and Trademarks & Anr. in which the petitioner was allowed the benefit of the order of the Supreme Court of India, albeit in a trademark opposition proceeding, in a similarly placed fact-situation.

The Hon’ble judge saw merit in Koch’s writs, and directed the IPO to furnish their response by way of an affidavit that should, inter alia, set out the IPO’s stance in the matter and the next steps proposed by it in light of the Supreme Court’s order. The Hon’ble judge listed the matters for further hearing on December 5, 2022.

Interestingly, on November 29, 2022, a mere five days before the next date of hearing, the firm was contacted by the IT team of the IPO, who confirmed that it was opening the e-filing portal for all the four (4) National Phase applications. On November 30, 2022, the firm, on behalf of Koch, immediately filed all four National Phase applications.

At the hearing on December 5, 2022, before Hon’ble Justice Amit Bansal, the firm, on behalf of Koch, apprised the judge of the filings. Accordingly, the Hon’ble judge disposed-off Koch’s writ petitions.

It may, however, not be an exaggeration to state that, in all probability, the IPO preferred allowing Koch to file four of their patent applications beyond the statutory deadline, rather than wait for the Hon’ble court to pass a blanket direction in all similarly placed patent cases. We believe that the latter scenario would have opened flood-gates for innumerable requests for extension in timelines, making it a logistical nightmare and an embarrassment for them.

While a blanket order from the DHC would have been a welcome development, the order paves the way for similarity placed parties to approach the DHC or any other court to obtain relief.

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