Indian IP office finally defers deadlines for time-bound IP Filings in India

On 19 June 2020, the Controller General of Patents, Designs and Trade Marks (Respondent) issued a Public Notice (Recent Notice) to the effect that the deadlines for various acts/proceedings, filing of any reply/document, payment of fees, etc relating to any intellectual property matter (IP Filings) falling due after 15 March 2020 shall be the date as decided/ordered by Court (defined hereinafter).

Background

In light of the prevailing COVID-19 pandemic, the Hon’ble Supreme Court in a Suo Moto Writ Petition (Civil) No 3/2020 exercised its jurisdiction under Articles 141 and 142 of the Constitution of India and passed an order dated 23 March 2020 (SC Order) directing extension of period of limitation in all legal proceedings, irrespective of the limitation prescribed under the general law or special laws whether condonable or not, w.e.f. 15 March 2020 until further orders.

Subsequently, the Respondent had issued Public Notices dated 25 March 2020, 15 April 2020 and 4 May 2020 fixing the deadline for IP Filings as 15 April 2020, 4 May 2020 and 18 May 2020 respectively. These Public Notices were challenged before the Delhi High Court (Court) in the matter of Intellectual Property Attorneys Association & Anr v Controller General of Patents, Designs and Trade Marks and Anr, W.P.(C) No 3059/2020 (Writ Petition). The Court had passed an order dated 11 May 2020 suspending the operation of the said Public Notices. Thereafter, the Respondent had issued another Public Notice dated 18 May 2020 (18 May 2020 Notice) fixing the deadlines for IP Filings falling due between 15 March 2020 to 17 May 2020 as 1 June 2020. The 18 May 2020 Notice was once again challenged in the Writ Petition and the Court vide order dated 21 May 2020 (Further Order) again stayed the operation of the 18 May 2020 Notice and fixed the matter for further proceedings on 17 June 2020. The above proceedings were covered in our previous Ergos dated 13 May 2020 and 27 May 2020. 

Latest developments

On 17 June 2020, the Court extended the operation of the Further Order and fixed the Writ Petition for further hearing on 30 July 2020. The Court further directed the Respondent to issue an appropriate notification immediately. In compliance thereto, the Respondent has issued the Recent Notice withdrawing its 18 May 2020 Notice and notifying that the deadlines for IP Filings falling due after 15 March 2020 shall be the date as decided by the Court.

Comment

By the Recent Notice, the Respondent has finally given the clarity on the timeline for IP Filings in India which is much needed relief to stakeholders across the world. As of now, all deadlines for IP Filings falling due after 15 March 2020 remains suspended until the date decided by the Supreme Court and the Court. We are monitoring further developments in the Writ Petition as well as proceedings before the Supreme Court and shall share further updates.

-       Smriti Yadav (Partner) and Shwetank Tripathi (Associate)

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