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  • Writer's pictureGaurvi Arora

HC holds no flexibility for filing request for extension to file national phase patent application


In the decision, Humanity Life Extension LLC v. Union of India[1], dated July 20, 2023, the Hon’ble Delhi High Court (hereinafter referred to as “the Hon’ble Court”) rejected the petition to interpret Rule 49.6 of the Patents Cooperation Treaty Regulations (hereinafter referred to as “PCT Regulations”) for justifying a one-month extension of the statutory deadline to file national phase patent application under Rule 138 of the Indian Patent Rules.


The Petitioner, Humanity Life Extension LLC, a US company manufacturing medical devices, filed a US patent application on February 06, 2017, and subsequently filed a PCT (“Patent Cooperation Treaty”) Application titled “Systems and Methods for Treating Blood” on February 05, 2018. The Petitioner instructed the Indian Patent Attorney to file the National Phase Application on September 05, 2019, however, the Attorney failed to do so before the expiry of 31 months’ time period from the priority date deadline for filing the Indian National Phase Application. On October 01, 2019, the National Phase Application was filed before the Controller Office, but it was returned within two days. The Petitioner tried to file the application again on October 09, 2019, claiming that the application was maintainable under Rule 49.6 of the PCT Regulations, but it was dismissed once again. Consequently, the Petitioner contested the Controller Office’s decision before the Hon’ble Court.


The Petitioner contended that the Central Government has the authority to make rules under Section 159 of the Indian Patents Act (hereinafter referred to as “the Act”) to facilitate the effective implementation of the Act's objectives. As India is a signatory to the PCT, and Chapter XXII of the PCT was incorporated into the Act to ensure adherence to PCT obligations, any rule created by the Central Government must align with PCT provisions and not contradict them under the authority of Section 159.

The Petitioner further argued that as per PCT Regulation 49.6, the designated office is obligated to reinstate rights related to an International Application if it determines that any delays were unintentional. Consequently, the modification made to Rule 138 of the Patents Rules goes beyond the scope of the Act and exceeds the powers granted to the Central Government.

PCT Regulation 49.6 reads as follows:

49.6 Reinstatement of Rights after Failure to Perform the Acts Referred to in Article 22

(a) Where the effect of the international application provided for in Article 11(3) has ceased because the applicant failed to perform the acts referred to in Article 22 within the applicable time limit, the designated Office shall, upon request of the applicant, and subject to paragraphs (b) to (e) of this Rule, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.


(f) If, on October 1, 2002, paragraphs (a) to (e) are not compatible with the national law applied by the designated Office, those paragraphs shall not apply in respect of that designated Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by January 1, 2003.”

Further, Rule 138 of the Patent Rules states:

“Power to extend time prescribed —

(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules.”


The primary issue in consideration was whether the Petitioner was entitled to additional time for filing the National Phase Application and whether the amendment to Rule 138 of the Patents Rules, which denudes the Controller of any effective power to condone the delay for an application under Rule 20 of the Patents Rules is ultra vires Section 159 of the Act.


The Hon’ble Court observed that “Whereas, prior to the amendment, the Controller had the power to extend the period prescribed under Rule 20(4)(i) of the Patents Rules by a period of one month. It ceased to have such power with effect from 16.05.2016.” The Hon’ble Court rejected the Petitioner's arguments, stating that they lacked merit. Further, the Hon’ble Court referred to a 2022 decision Diebold Self Service Systems v. Union of India (2022/DHC/005743), where a Co-ordinate Bench of the Hon’ble Court remarked that in terms of Regulation 49.6(f) of the PCT Regulations, if any of the other clauses of the said Rules (49.1 to 49.5 of the PCT Regulations) are not compatible with the National law applied to the designated office, the said clauses would not apply for as long as they continue not to be compatible with that of the PCT, provided that the designated office informs the International Bureau accordingly by 01.01.2003. India has expressed its reservations in respect of Regulation 49.6(f) of the PCT Regulations. It is also not disputed that the IPO had communicated its reservations towards Regulation 49.6 of the PCT Regulations.” The Hon’ble Court's rationale was that the Indian government had invoked the reservation under Rule 49.6 (f) of the PCT Regulation, making Rule 49.6 (a) of the same regulation inapplicable. Additionally, the High Court emphasized that the timelines outlined in the amended Rule 138 are stringent and do not allow for any extension of the delay period.


This decision, emphasizing the dichotomy of international law where there’s a visible separation between domestic and international law, reiterates the strict interpretation of statutory timelines under Rule 138 of the Indian Patent Rules and underscores the inapplicability of Rule 49.6(a) due to India's reservation under Rule 49.6 (f) of the PCT Regulations.

[1] W.P.(C) 12238/2019


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