THIJS, ROELAND MICHEL MATHIEU vs ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 3rd October, 2024
+ C.A.(COMM.IPD-PAT) 70/2024
THIJS, ROELAND MICHEL MATHIEU …..Appellant
Through: Mr Vidur Mohan and Mr Kaushal Kumar Singh, Advocates.
versus
ASSISTANT CONTROLLER OF PATENTS AND
DESIGNS …..Respondent
Through: Ms Nidhi Raman, CGSC with Zubin Singh and Ms Rashi Kapoor, Advocates.
CORAM:
HON’BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present appeal has been filed under Section 117(A) of the Indian Patents Act, 1970 [Patents Act] against the impugned order dated 10th May, 2024 passed by the Assistant Controller of Patents and Designs, Patent Office [hereinafter the Assistant Controller].
2. By the aforesaid impugned order, the Form-15 filed on behalf of the appellant for seeking restoration of the Patent No. 408932 under Section 60 of the Patents Act has been refused by the Assistant Controller on account of non-compliance of the requirements under Section 60(3) of the Patents Act and Rule 84 (3) of the Patents Rule, 2003 by the appellant.
3. The undisputed facts obtaining in the present appeal are that the appellant had applied and was granted a patent being Patent No. 408932 in respect of Apparatus and Method for Recovering Particles from a Slurry.
4. The aforesaid patent was granted on 12th October, 2022 and the renewal fee was to be paid within three months, further extendable by six months, in accordance with proviso to Section 142(4) of the Patents Act.
5. Since the appellant failed to pay the renewal fee within the prescribed time period, the Assistant Controller ceased the patent on 12th January, 2023.
6. The appellant filed an application under Section 60 of the Patents Act read with Rule 84 of the Patents Rules, 2003 on 28th August, 2023 for restoration of the patent in the prescribed Form-15 stating that the intimation of grant of patent was sent on wrong email address and therefore the appellant was not able to renew the patent in a timely manner.
7. The said Form-15 came to be rejected by the impugned order.
8. Counsel appearing on behalf of the appellant submits that the Assistant Controller sent the grant of patent notification to an erroneous email which was used to sign up in the e-filing portal i.e., aksarkaraks@gmail.com instead of email address ajay@xpert-pro.com provided in Form-1 as the address for service.
9. Notice in this appeal was issued on 5th September, 2024 and the counsel appearing on behalf of the respondent was asked to seek instructions with regard to discrepancy in the email addresses.
10. Ms Nidhi Raman, CGSC, appearing on behalf of the respondent submits that the confusion was caused on account of the appellant providing the two email addresses at different points of time. She does not dispute that the email regarding renewal of patent was sent at aksarkaraks@gmail.com and not at ajay@xpert-pro.com, which was the address given for service.
11. I have heard the counsel for the parties.
12. Undisputedly, both in Form-1 as well as Form-18, the appellant had provided the email ID ajay@xpert-pro.com as the email address for the purposes of service. The email ID aksarkaraks@gmail.com was only used to sign up the account and was never given as the email address for the service of the patent application.
13. Since the appellant did not receive the communication from the respondent in a timely manner, the requisite fee could not be paid.
14. The consequence of a patent being ceased is quite extreme. In my opinion, the appellant cannot be visited with such a consequence for no fault of the appellant. In the present case, the appellant had no intention to abandon the patent. It was the Assistant Controller who sent the communication at the wrong email address.
15. Accordingly, the present appeal is allowed and the following directions are passed:
i. The impugned order dated 10th May, 2024 is set aside.
ii. The respondent is directed to restore the patent no. 409832 of the Indian Patent Application No. 2020170841 upon filing of the renewal fee.
iii. The renewal fee will be filed within two weeks.
AMIT BANSAL, J
OCTOBER 3, 2024
rt
C.A.(COMM.IPD-PAT) 70/2024 Page 2 of 2