This should be the prequel to my earlier post on section 137 and 138, where I discussed the scope and applicability of these sections along with the issue of as to whether the delay in entering national phase in India could be condoned by the Patent Office. Here I would like to make out a clearer distinction between ‘deemed withdrawal of Patent Application’ and ‘deemed abandonment of Patent Application’ as per the Patents Act, 1970.
Although, at times, in general usage, withdrawal and abandonment are used synonymously, their connotations are quite different especially in legal terminology. The dictionary meaning of the word abandoned refers to - give up, surrender, leave or desert; while the meaning of term withdrawal is provided as – to take away or to remove oneself from participation. Thus, it appears that the term ‘withdrawal’ has an element of an action taken (with a presumably clear intent) to effectuate the withdrawal, whereas the ‘abandonment’ is an effect of failure (intentional or otherwise) to take any required action. Let us see the usage of these two terms in the Act:
As per the Act, a patent application is deemed to be abandoned in following cases:
- Section 9 – where the failure to file the complete specification within time (viz. within 12 months from provisional) results in the application to be treated as ‘deemed to be abandoned’;
- Section 21 – where the application is ‘deemed to be abandoned’ if the Applicant fails to put the application in order for grant within 1 year of the issuance of FER; and
- Section 40 – where the application is deemed to be abandoned if any person fails to comply with any direction as to secrecy given by the Controller under section 35, or makes or causes to be made an application for grant of a patent outside India in contravention of section 39.
Thus it is observed that the Abandonment is the effect of failure of the applicant to do o comply with something which he is required to do as per the Act in order to obtain a patent.
With regard to the use of ‘deemed withdrawal of the application’, the Act uses the phrase only at two instances:
Firstly, in section 11B(4), where the application is deemed to be withdrawn if a request for examination (RFE) is not filed within 48 months period from the date of priority; and
Secondly, Rule 22 of the Patent Rules which says that an international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of rule 20. Rule 20, along with other basic requirements, specify the deadline to enter PCT national phase in India to be 31 months from priority.
These two provisions for deemed withdrawal are in addition to the actual withdrawal provision [section 11B(4)(i)] wherein the applicant can withdraw its patent application anytime before the grant (and atleast 3 months before the publication to withdraw without prejudice). It must be observed that although the above mentioned provisions for ‘deemed withdrawal’ also deals with failure of Applicant to comply with the deadlines, they are still termed as withdrawal instead of abandonment. The reason behind the use of term withdrawal instead of abandonment, could be to confer ‘an intention not to proceed’ on part of the applicant and making such failure equivalent to a positive action taken by applicant to withdraw the application instead of counting it as a mere failure (which could either be intentional or un-intentional, and accordingly could be condonable in certain circumstances if delay is justified and unintentional). These, in practice, are the two strictest deadlines in the Act, which are not condonable by any authority. Therefore, I believe that the terms ‘withdrawal’ and ‘abandonment’ are used judiciously in the Act, not with respect to the cause but with respect to the effect.
