This article is written by Bheeni Goyal from Symbiosis Law School, Pune, which discusses the order of the Supreme Court, which regulated the management of the IPR filings and hearing.
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As a consequence of the nationwide lockdown, which was announced by the Government of India, the numerous institutions around the nation have adjourned their operations at least till the date of unlocking pronounced by the government.
This lockdown has affected the whole system of legal proceedings and litigation in India. Therefore, on March 23, the Supreme Court took the suo moto cognizance of issues that have been faced by the citizens of the country due to the coronavirus pandemic, containing the problems that legal practitioners and litigants may face. To avoid such complications and also to limit the human presence of the litigants in the court premises, the Supreme Court of India summoned its full powers under Article 142 of the Constitution. It passed the order to prolong the period of limitation in all proceedings with effect from March 15, 2020, till further orders.
The High Court of various states and the IP Offices have also announced measures that will affect IP proceedings. The author will discuss the matters concerning the management of Intellectual Property Rights and filings of the same at the time of COVID-19.
Effect of COVID- 19 on time-bound IP filings
Due to the situation of COVID in the country and worldwide situation of Pandemic, the Supreme Court in a Writ Petition suo moto exercised the jurisdiction as provided under Article 141 and Article 142 of the Constitution. The Supreme Court passed the order, which directed the extension of the period of limitation for all the cases and proceedings from March 15 till further orders. The extension of the period granted under this order is not limited to any particular law. Still, it will be applicable over all the legal proceedings irrespective of General Law, Special Law, whether condonable or not. On 23rd March 2020, the Controller General of Patent and Designs issued the Notice stating that all the stakeholders will have the right to put a request for the extension of the period of limitation after the situation becomes regular and such requests should be made in accordance with the law.
Effect on IP Filings due to the order
On May 11th, 2020, in the case of Intellectual Property Attorneys Association and Another v. Controller General of Patents, Designs and Trademarks and Another the High Court of Delhi passed an order for the extension of the limitation period for various acts, proceedings, filing of any replies and documents, etc. in relation to any intellectual property matter which has been due on or after March 15, 2020, till the time the court has passed further directions. The Controller General of Patents has issued the notice on 25th March 2020, which provides that due to the nationwide lockdown, all the IP offices will be closed for 21 days. As the nationwide lockdown extended further, the Controller General of Patent issued another Public Notice on April 15th, 2020, whereby the Respondent (Controller General) fixed the due date for all the time-bound IP filings as of May 4th, 2020. All the Public notices which have been issued by the Controller General have been challenged through the Writ Petition inter alia on the ground of notice not being in conformity with the Supreme Court order.
Further, it was claimed that the deadlines are very short for filing any application as it is immediately on the day when the lockdown imposed on the nation will be lifted, and this would cause harm to the various stakeholders. However, due to the continuous imposition and extensions of the lockdown, the Controller General issued another notice dated May 4th, 2020, fixing the date of filing of the IP on May 18th, 2020. Hence after the proceedings were heard, the court observed that no tribunal authority or court has any right to act contrary to the order which has been passed by the Supreme Court under Article 141 and Article 142 of the Constitution of India. It was further provided under Article 144 of the Constitution, all the tribunals, courts, and the authorities are required to act in accordance with the orders which have been passed by the Supreme Court of India. The court gave the directions for the respondent to act in accordance with the Supreme Court order and hence the writ petition which has been filed by the petitioners were disposed of. This order was very necessary for the various stakeholders who reside outside the country as well as it would have become complicated for the various stakeholders to timely file the IP. This order acted as a respite for them in the time of crisis.
Measures adopted for smooth facilitation of IPR Proceedings and filings in COVID times
After the imposition of lockdown after March 23rd, many litigants were concerned about the filing of the plaint and appeals as all the courts were closed. For many cases, including IP, the limitation period was exceeded, which could deny many people from justice. The concern has especially increased for the foreigners who have filed the proceedings in relation to IPR registration or who are willing to file them in the future. But there is no reason to worry as far as the matter of limitation is apprehensive because the Supreme Court has extended the period of limitation for filing all the appeals and petitions and lawsuits before all tribunals and courts in India until the further orders are passed by the SC. It is a matter of concern for both the clients in India as well as overseas.
Most of the overseas clients are in a similar situation to the pandemic. But the government of India, after observing the practical difficulties, has issued the notifications where hearings, particularly of the Patent and Trademarks, have been converted from personal hearings to the online hearings. Earlier also the option of conducting the proceedings through means of video conferencing was available where it was exercised at the option of the applicant. But after the issue of the notification, there would be no personal hearings, and everything would happen through video conferencing. A similar situation also exists with the trademark; however under the government has issued the notification directing the adjournment of hearings, but the law still provides that if the parties want to opt for the option of the video conferencing, they have an opportunity to do so.
Filing and hearing of Patent Applications
If we consider the submission of various patent documents within the period of limitation, two aspects are required to be considered. The first aspect is when the documents are filed for a fresh filling. For a fresh filing, there is a limitation prescribed, and there is no extension of time granted for that. Even though the extension of time has not been provided, still that does not mean that the filings would lapse. The application can still be filed, and if the deficiency exists, it can be overcome either at the stage of the first examination report or still the applicant has the time of three months to file the documents in the longer course. Therefore it’s quite unlikely that the situation is going to affect any recent filings.
However, in the second situation, when the hearings have already been conducted previously, and now there is a requirement to file certain documents post the hearing that could comprise of the submission of the written arguments or fresh documents, there the Government of India has come out and given the relaxation that applicants can apply for the condonation of delay and the application for the condonation of delay can be filed at any time within a period of one month from the cessation of the COVID pandemic. So through this, it can be concluded that the situation is not as bad as most of the clients in India and overseas would believe to be. The patent office has initially provided that all the filings, including payment of fees, filing of documents, and responses, which are due in the period between March 25 and April 14, shall remain suspended during this period. The time for such filings shall become operative from the date on which the Patent Office resumes operations whenever after the Pandemic.
In a notice published on March 19th, 2020, the Patent Office had recommended all the applicants and parties to use the provisions of Rule 6 (6) of the Patents Rules 2003 to request an extension of time or condone the delay in filing of the documents, affidavits, and other responses. Though, one must bear in mind that the Supreme Court’s directive to extend limitation periods for all courts, tribunals will apply to the IP proceedings as well.
Although the filing would not be in the ordinary course, the government and the court through the notice and order have provided a certain amount of flexibility to all the applicants.
Filing and hearing of IP Appeals
The next thing to be discussed is the filing of the appeal before the Intellectual Property Appellate Board. When the notification was issued, the proceedings were adjourned till the time of April. By the order dated 11th May 2020, which has been passed by the Delhi High Court as mentioned above, the limitation period for various filing of the proceedings and payment of fees has been extended till the further orders of the Supreme Court. The court bypassing the subsequent orders is trying to handle the situation of filing of the various IPR filings.
Another significant issue to be taken into consideration is the filing of the documents and affidavits concerning the trademarks which have been executed by the foreign clients. However, for the same situation, the Trademark office can provide the applicants and the clients with sufficient cause for the extension of time as the same provision has been provided into the statute. Therefore this might not possess great difficulty. In case the application for the registration of the trademark is rejected by the registrar, then any individual has the right to file an appeal against the particular order or decision given by the registrar.
The same can be filed before the Intellectual Property Appellate Board ( also referred to as IPAB). The procedure for the appeal can be found in the Intellectual Property Appellate Board (Procedure) Rules 2012, which has been drafted by the Department Of Industrial Policy and Promotion of the Ministry of Commerce and Industry. A proper procedure has to be followed with proper rules and regulations. One of the rules provided in rules is that of the time range. The respective appeal against the respective order of the registrar has to be filed within three months of receiving the rejection order of the registrar. There are, however, certain exceptions; an appeal may be accepted if the reasons for the late appeal are justified and the appellate board is satisfied with it.
Because of the Order passed by the court, the deadline for all the IP filings due on or after 15 March 2020 stands prolonged until further orders of the Hon’ble Supreme Court. The Order is a much-needed in this time of crisis as it would have been enormously problematic for various stakeholders from India as well as abroad to meet the due date of 18 May 2020 for IP filings, which would have obstructed the brand protection efforts of the stakeholders.
The order issued by the Supreme Court on March 23rd by taking suo moto cognizance of the difficulties due to the situation of pandemic and the nationwide lockdown has been beneficial for many IP applicants in filing their documents and affidavits. Considering the rapid spread of the virus in the country, the situation will take a prolonged time to get into a routine. Therefore, the directive issued on March 19 makes sure that all the proceedings or hearings are conducted online through the means of video conferencing. Also, the adjournment of the physical filing and granting of the extension acts as a boon mostly for foreign applicants as it is challenging for them to move from one place to another in the time of crisis all over the world. As this order is made binding on all the courts and tribunals by exercising power under Article 141, 142, and 144 of the Constitution of India, no one has the right to question the same.
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