Case Note & Summary
The petitioner, Teijin Limited, a Japanese corporation, was the grantee of Patent No. 207883 in India. The patent was granted on 24th October 2003. The petitioner failed to pay the 3rd to 9th year annuities, and consequently, the patent was treated as ceased under Section 53 of the Patents Act, 1970. The petitioner applied for restoration under Section 60, but the Patent Office rejected the application on 3rd January 2011 and 9th March 2011, stating that the failure to pay annuities was not due to a bona fide mistake or sufficient cause. The petitioner contended that it had engaged an agent to pay annuities, but due to a change in the agent and miscommunication, the payments were not made. The petitioner also argued that the Patent Office did not issue any notice before treating the patent as ceased, which was contrary to the practice and natural justice. The court examined the provisions of the Patents Act and Rules, and noted that Rule 80 of the Patents Rules, 2003 requires the Patent Office to give notice before the patent ceases. The court found that the Patent Office had not issued any such notice, and the petitioner's failure was due to a bona fide mistake. The court held that the petitioner had shown sufficient cause for restoration and directed the respondents to consider the restoration application on merits, without being influenced by the earlier orders. The writ petition was allowed, and the impugned orders were quashed.
Headnote
A) Patents Act - Restoration of Patent - Section 60 - Cessation for Non-Payment of Annuities - The petitioner, a Japanese corporation, failed to pay 3rd to 9th year annuities due to a bona fide mistake in believing that annuities were paid through an agent, and the Patent Office did not issue any notice before treating the patent as ceased. The court held that the Patent Office ought to have given notice before cessation, and the petitioner had shown sufficient cause for restoration. (Paras 1-10) B) Patents Act - Notice Requirement - Natural Justice - Section 53 read with Rule 80 - The court observed that the Patent Office has a practice of issuing notices before cessation, and failure to do so violates principles of natural justice. The impugned orders were set aside, and the respondents were directed to consider the restoration application on merits. (Paras 11-15)
Issue of Consideration
Whether the Patent Office was justified in treating the patent as ceased for non-payment of annuities without giving prior notice to the patentee, and whether the petitioner had shown sufficient cause for restoration of the patent.
Final Decision
The writ petition is allowed. The impugned orders dated 03/01/2011 and 09/03/2011 are quashed and set aside. The respondents are directed to consider the petitioner's application for restoration of Patent No.207883 on merits and in accordance with law, without being influenced by the earlier orders.
Law Points
- Bona fide mistake
- Sufficient cause for restoration
- Notice before cessation
- Section 60 Patents Act 1970
- Rule 80 Patents Rules 2003
- Natural justice
- Communication gap
