IP prosecution and application stages before IP registry not affected by limitation; confirms Delhi High Court.
The High Court of Delhi, vide order dated 11.05.2020 in W.P. (C) No. 3059/2020, suspended the public notice dated 04.05.2020 issued by Controller General of Patents, Designs and Trademarks (CGPDTM). On previous occasions, the CGPDTM had also issued similar notices which in sum and essence stated that any limitation with regard to payment of fees, filing reply etc. that expired within the lockdown period shall be extended to the date when IP offices across the country reopen. On 04.05.2020 the CGPDTM issued a similar notice stating that limitation shall expire on 18.05.2020 i.e. one day after the lock down is lifted. Moreover, the said notice also stated that the period of lockdown will be counted from 25.03.2020 onwards to 03.05.2020 (which was further extended by Government of India to 17.05.2020).
The petitioners, IPAA (Intellectual Property Attorneys Association)—and another association specializing in Intellectual Property Law practice, had challenged the previous notices as well the notice dated 04.05.2020, on the ground that these notices were in direct contravention to the order dated 23.03.2020 passed by The Supreme Court of India in SUO MOTU WRIT PETITION (CIVIL) NO. 3 OF 2020 which is titled as IN RE: COGNIZANCE FOR EXTENSION OF LIMITATION. The said order of The Supreme Court clearly states that any limitation period that expires during the lockdown period i.e. w.e.f 15.03.2020 shall be extended till further orders passed by the court. The petitioners argued that the cut-off date fixed by the CGPDTM not only goes against the order of The Supreme Court, as it extends the limitation to 1 day only, but also “imposes onerous burden both on the litigants as well as their advocates” and that it would be difficult for the litigants and lawyers to access their files and ensure that filings as per prescribed procedures are made on 18.05.2020, when the lockdown itself will be lifted only on 17.05.2020.
After taking into consideration the arguments of both the parties (which were heard via video conference), the High Court passed a reasoned order which stated that the public notice dated 04.05.2020 passed by the respondent i.e. CGPDTM is in direct contravention to the order passed by the Supreme Court in In re: Cognizance for extension of limitation. The High Court also stated that “under Article 144 of the Constitution, all authorities whether civil or judicial, located in territory of India are required to act in aid of the orders passed by the Supreme Court”. The Court further agreed with the petitioner’s arguments that protection against limitation should commence from 15.03.2020 and not 25.03.2020 as indicated in the public notice and in conclusion held that it is necessary to suspend the operation of the said public notice dated 04.05.2020 and the respondent i.e. CGPDTM must act in accordance with the order of the Supreme Court dated 23.03.2020. The court accordingly, with the agreement of both the parties, disposed-off the writ petition and ordered the respondent to make necessary changes.
Thus, as of today, the limitation period for filing any documents/replies or payment of fees in Intellectual Property matters/applications shall not expire on 18.05.2020 as originally stated in the public notice dated 04.05.2020 but shall expire as per further orders or clarifications by the Supreme Court of India. In conclusion, this writ petition shall give some breathing room to all litigants and advocates to asses and check for any limitations, that had expired during the lockdown period, after their offices reopen.