Keeping in step with the times

Patent offices and courts have introduced proactive measures in response to the COVID-19 lockdown

The COVID-19 pandemic, one of the biggest public health crises in our time, has greatly impacted all realms of life across the globe. The lockdown and social distancing measures, taken by governments to curb transmission rates and flatten the curves of infection, have also impacted the global economy, business, and all regulatory and legal systems – including the operations of intellectual property (IP) systems across the world. IP authorities around the world have issued notices for the extension and relaxation of various timelines to facilitate users during this difficult time.

On 24 March, the Ministry of Home Affairs issued an order for a nationwide lockdown of all establishments, except those providing health and essential services. Consequently, all offices of the Controller General of Patents, Designs & Trade Marks (IP office) were directed to close, from 25 March to 14 April.

On 15 April, vide another notice, the lockdown was extended to 3 May, with a clause to provide exceptions to allow certain services and manufacturing activities to resume some economic operations. The exceptions also allowed central government offices to return to functioning by 20 April, and directed higher officials to mandatorily attend their respective offices while maintaining social distancing. The lockdown was further extended to 17 May.

The electronic filing portals of the IP offices, however, remained unaffected and were available throughout the lockdown. Moreover, the IP offices became partially functional from 20 April, and senior officials have been attending to their official duties.

Deadline dilemmas

According to a public notice issued by the head of IP offices, all due dates for filing documents/replies, payments of fees, and completion of any action in respect of any IP applications filed in India for which the due dates fell within the lockdown period, shall be the date of the reopening of the IP offices, which is scheduled for 18 May.

However, there is a legitimate concern among rights holders and practitioners regarding the implementation of the notice issued by the IP office. If the notice was meant to push all the deadlines covered under the lockdown period to 18 May, then it may prove difficult to comply with various procedures such as the filing of original documents, stamping and notarization of documents, and associated filings.

Extension of limitation period

Having said that, some light on this issue can be drawn from the order dated 23 March 2020, passed by the Supreme Court, to provide relief by taking suo motu cognizance of the situation. The Supreme Court, by order, extended the limitation period for filing of suits, appeals, applications and all other documents in all proceedings before any courts, tribunals and authorities in India from 15 March 2020 until further notice.

On 11 May 2020, Delhi High Court also confirmed the applicability of the 23 March 2020 order of the Supreme Court on extension of timelines under all Indian IP laws.

A writ petition was filed before Delhi High Court challenging the number of public notices issued by the IP office. The high court held that extension of all timelines under Indian IP laws shall start from 15 March 2020 as directed by the Supreme Court and that the extensions shall remain valid till the date decided by the Supreme Court upon a review of the COVID-19 situation and lockdown.

The high court also agreed that the cessation of extension on the day of lifting of lockdown provides a very narrow window to applicants and lawyers to prepare and file documents. The high court therefore, while disposing of the writ petition, left the time for cessation of extension of timelines under IP laws to be decided by the Supreme Court.

The Supreme Court is likely to review the situation once lockdown orders are lifted by the government, and may pass further orders for closing the extension of the limitation period. The Supreme Court may provide a reasonable period to file documents or take actions that were required to be taken during the period of closure of the offices.

Another milestone achieved during this crisis is that courts have recognized the importance of holding hearings through video conferencing. While most hearings before the patent offices have been conducted through video conferencing for the past two years or so, in these changed circumstances all other hearings, including the hearings by the trademark offices in India, can be expected to move towards video conferencing.

The Delhi High Court and the subordinate district courts have also now resorted to using video conferencing facilities for holding hearings in urgent matters during the lockdown. The authors expect the courts to continue with this facility even after the lockdown.

It is noteworthy that simple yet logical and progressive steps are being taken by the relevant authorities, keeping in mind the challenges faced in these times, to not only prevent legal and IP systems from stalling, but to improve its efficiency and reliability for times to come. With this in mind, IP rights holders and practitioners definitely have something to cheer about, and can partake in the evolution and progress of the system.

Manisha Singh is the managing partner and Omesh Puri is a partner at LexOrbis.