Provisions Of Patent Act Applicable To All Companies Irrespective Of Whether They May Be Indian Or German: Bombay HC Imposes ₹1 Lakh Costs On German Firm

The Bombay High Court has imposed a cost of Rs. 1 lakh on a German company, AIC246 AG & Co. KG, as a condition to condone a 91-day delay in filing a petition related to a patent dispute.

The Court was not persuaded by the company’s reasoning for the delay, emphasizing that the provisions of the Patent Act, 1970, apply uniformly to all companies, whether Indian or foreign.

"The cause for the delay in the present case is that the Applicant is a German company and due to which extra time was taken for receiving instructions from the Applicant is German Counsel and thereafter, the Petition could be prepared. In my view, the aforementioned provisions of law in the Patent Act, 1970 is applicable to all companies irrespective of whether they may be Indian or German. There is a three months period prescribed for filing of Appeals from the impugned orders of Controller Patent," the Single-Judge Bench of Justice R.I. Chagla said.

The Bench expressed dissatisfaction with the explanation provided by the German company’s counsel.

The Counsel argued that the delay was due to the time taken to receive instructions from the company's headquarters in Germany. The process of executing and notarizing a power of attorney in Germany, coupled with complex consultations with legal teams in both India and Germany, was cited as the cause of the delay.

However, the Court firmly rejected this argument, stating, "Provisions of law in the Patent Act, 1970, is applicable to all companies, irrespective of whether they may be Indian or German." It further noted that the delay, which was twice the statutory period allowed under the Patents Act, 1970, could not be justified merely by the company’s foreign status or the time taken for legal formalities in Germany.

The case arose after the Indian Patent Office rejected an application filed by AIC246 AG & Co. KG in June 2023. The company then approached the Bombay High Court, seeking condonation of the delay in filing their challenge against the Patent Office's decision.

The company argued that the nature of the patent issues was highly technical, necessitating complex consultations with their legal teams. They contended that these consultations were crucial due to the intricate nature of the patent’s rejection, which involved concerns over lack of novelty, inventive step, and non-patentability under Section 3(d) of the Patents Act.

Despite these arguments, the Court found the petition lacking in substantial details. The Bench remarked, "The present Application is bereft of particulars as to the delay in filing of the Petition. There does appear to be a delay of 91 days, i.e., twice the statutory period which is prescribed under the Patents Act, 1970."

The Court further pointed out that AIC246 AG & Co. KG had shown no urgency in filing its petition within the prescribed deadline. Given the absence of specific reasons for the delay, the Court was not inclined to condone it without imposing conditions.

As a consequence, the Court ordered that the condonation of delay would only be granted if the German company paid Rs. 1 lakh to the Baldeodas Bhagirathi Shah Trust within two weeks. This payment was set as a condition to proceed with the petition.

"...this Court considers it fit to extend the time only upon imposition of costs under Rule 16 of Intellectual Property Appellate Board (Patents Procedure) Rules, 2010 read with 117A(4) of the Patent’s Act, 1970. This Court is not impressed with the argument of Mr. Nargolkar that the fact of the Applicant being a German company should be taken into account and/or it takes time in Germany for execution and notarization of Power of Attorney and accordingly, there has been delay. This does not explain why instructions were received by the Applicant through its German Counsel only on 12th September 2023 i.e. over almost two and half months after the impugned order dated 26th June 2023 was passed," the Bench ordered. 

Accordingly, the Court disposed of the interim application. 

Cause Title: AIC246 AG & Co. KG v. The Patent Office of India & Ors. [Neutral Citation: 2024:BHC-OS:12806]

Appearance:-

Petitioner: Advocates Amey Nargolkar, Nisha Austine, Dhiren Karania

Respondent: Advocates Rashmin Khandekar, Anand Mohan, Vandita Malhotra Hegde, Rishi Mody, Archi Gala

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