In a recent order in National Research Development Corporation (NDRC) vs. Sanat Products Ltd., the Controller of Patents and Design has rejected the restoration application of NDRC in respect of Indian Patent no. 186320 (based on Application number 1598/DEL/1997). The Controller has held that Section 60 of the Indian Patents Act is a self- contained code in prescribing the time period within which an application for restoration can be made and as such the Controller does not have the power to enlarge the period. It was further observed by the Controller Section 60(3) of the Act requires the Patentee to provide reasons for the ‘failure to pay the renewal fee’.
The Controller also held that though Section 81 of the Patents Act provides the power to the Controller to extend the time limit for doing any act; however, it does not provide any power to condone the delay in filing a request. It is also pertinent to note that under section 60 of the Act, there is no provisions for seeking extension of time for filing the restoration application beyond eighteen months from the date on which the patent ceased to exist.
A brief look at the facts of the case:
- NRDC was granted Indian patent no. 186320 in respect of invention entitled, “A process for the production of dried algal biomass from spirulina”.
- Said patent was in force up to 15th September 2006 as the renewal fee was paid up to the 8th year.
- The 9th year renewal fee had to be paid on or before 15th September 2006.
- Said renewal fee was not paid and therefore patent right ceased on 15th September 2006.
- As per Section 60(1) NRDC had time up to 15th March 2007 to file restoration application.
- However, they filed a restoration application on 2nd February 2009.
- The reason for the delay in payment was mentioned as, ”due to inadvertence the renewal fee was not paid.”
- The restoration order was issued on 9th April 2009 and a letter for payment of additional fees was issued on 13th April 2009
- M/S Sanat Products Ltd., filed a writ petition before the Honorable Delhi High court on 16th March 2010 on the ground that the restoration of said patent was improper as the restoration of a lapsed patent is time barred.
- The Delhi High Court set aside the Controller’s order dated 9th April 2009, vide its order dated 13th November 2014, and referred back the case to the Patent Office Delhi, with directions to consider the matter afresh by offering hearing to both the parties.
- The mater was heard by the Controller of Patents and Design on 27th October 2015.
At last, it was held that the restoration application was not made within prescribed time and none of the reasons given by the Patentee for lapse of patent is justified and cannot be considered for making a prima facie case for restoration. The Patentee has thus failed to prove that the lapse of patent was unintentional.