In the case of Thijs, Roeland Michel Mathieu vs Assistant Controller of Patents and Designs, the Delhi High Court ruled in favor of the appellant, Thijs, Roeland Michel Mathieu, and allowed them to restore their patent.
Background of the Case
The appeal was filed by Thijs, Roeland Michel Mathieu under Section 117(A) of the Patents Act, 1970, challenging an order passed by the Assistant Controller of Patents and Designs on 10th May 2024. The Assistant Controller had refused the appellant’s application for restoration of Patent No. 408932 due to non-compliance with Section 60(3) of the Patents Act and Rule 84(3) of the Patent Rules, 2003.
The appellant had been granted the patent on 12th October 2022 for an invention titled “Apparatus and Method for Recovering Particles from a Slurry.” Under Section 142(4) of the Patents Act, the renewal fee was to be paid within three months, extendable by six months. However, due to a failure to pay the renewal fee within this period, the patent lapsed on 12th January 2023. Subsequently, the appellant filed an application on 28th August 2023 for the restoration of the patent, stating that the notification of the patent grant had been sent to an incorrect email address, which caused the delay in payment.
The key issue in the appeal was the appellant’s contention that the notification of the grant had been sent to an email address (used solely for signing up on the patent office’s e-filing portal) rather than the email provided for official communication. The appellant had submitted the correct email for service in both Form-1 and Form-18, yet the Assistant Controller sent the communication to a different email address.
The Court’s Decision
The court found merit in the appellant’s claim, noting that the discrepancy in the email addresses was the fault of the respondent, not the appellant. The court stated that the consequences of patent cessation are severe, and in this case, the appellant had no intention to abandon the patent. The court concluded that penalizing the appellant for a mistake in communication would be unjust, particularly when the appellant had taken reasonable steps to maintain the patent.
As a result, the court set aside the order of 10th May 2024 and directed the respondent to restore Patent No. 408932 upon the appellant’s payment of the renewal fee within two weeks.
Citation: Thijs, Roeland Michel Mathieu v. Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 70/2024 (H.C. Del. Oct. 3, 2024). Available at: http://indiankanoon.org/doc/180515945/, Visited on: 06/10/2024.
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