Article
Are the time limits prescribed by the Patents Act, 1970, mandatory or directory?
By T. Srinivasan, P Mahalakshmi and Niharika Tiwari
The article in this issue of IPR Amicus discusses the prescribed timelines set under the Patents Act, 1970 and the Patent Rules, 2003, and throws insights on the flexibility of timelines set forth under different orders. It comprehends various scenarios where the extension of the breached timelines has been allowed and also the cases wherein the flexibility of the timelines was found not to be permissible. Elaborately discussing various case law, the authors note that it is the responsibility of the Patent agents and the Applicants to strictly adhere to all the deadlines and to have a clear understanding on the deadlines which can be extended and deadlines which cannot be extended in the prosecution of Patent Applications. They note that though under suitable circumstances the Courts are liberal in extending the timelines, the Courts also insisted that these provisions regarding the timelines relating to various stages of a patent application are mandatory and not merely directory and therefore can only be extended in special circumstances where sufficient reasons are afforded…
Ratio decidendi
- Trademarks – International registration – Deemed protection under Section 35E(5) cannot be extended when opposition filed within time – Delhi High Court
- Commercial suit involving urgent relief – Pre-institution mediation – No requirement of application seeking exemption – Delhi High Court
- Designs – Market survey cannot establish lack of novelty and originality – Delhi High Court
- Trademarks – Words ‘Fly High’ are descriptive of aviation sector – Use of words ‘Fly Higher’ as descriptor (and not trademark), for different services, not infringes trademark ‘Fly High’ – Delhi High Court
- Trademarks – Registrar cannot condone delay beyond period prescribed in Rule 119 for filing review – Delhi High Court
- Patents – Territorial jurisdiction for revocation applications and appeals clarified – Delhi High Court
News Nuggets
- Patents – No deemed abandonment in case of fault of patent agent
- Copyrights – Invocation of Section 64 by police is non-application of mind
- Trademarks – ‘GLOW-GETTER’ as a composite mark cannot be rejected in Sections 9 and 11
- Patents – Scope of submission of written submissions post heading
- Trademarks – Benefit of Section 35, covering bona fide use of own name, when not available
- Territorial jurisdiction of Court – Spill over of advertisement not material
