A disappointed applicant once asked: “If the Controller rejected my patent application, can I ask him to reconsider?” The answer lies in Form 24, a statutory route for seeking a review or setting aside of a Controller’s decision or ex-parte order. Although often overlooked, it remains a vital tool in patent practice in India.
This article explains: what Form 24 is, when and how it is used, the legal basis, procedural steps, grounds for review, limitations, comparative perspective, and practical considerations.
Legal Basis & Scope
Under Section 77(1)(f) of the Patents Act, 1970, the Controller has power “to review his own decision on an application made within the prescribed time and in the prescribed manner.” Likewise, Section 77(1)(g) empowers the Controller to set aside an order passed ex parte, upon proper application.
Rules governing this are set out in Rule 130 of the Patents Rules, 2003. Rule 130(1) deals with review of decisions (clause f), and Rule 130(2) with setting aside ex-parte orders (clause g).
Thus, Form 24 is prescribed for:
Review of a substantive decision by the Controller (on merits, opposition, hearing etc.).
Setting aside of an ex-parte order (i.e. where the other party was not heard).
If the decision/order affects other persons (e.g. opponents or third parties), the Controller must forward copies of the Form 24 application and the grounds to them.
Importantly, a decision rendered by the Controller upon the review (or setting-aside) is final in that context - no further appeal under Section 117A is available against the review outcome.
Time-Limit & Extension
Rule 130 requires that the application be filed within one month from the date of communication of the decision (for review) or of the ex-parte order.
The Controller may allow a further time not exceeding one more month, on request via Form 4 (the extension mechanism).
Thus, the maximum window is two months (one + extension) if justified. Failure to file in time generally bars the remedy.
Contents & Drafting of Form 24 Application
The requirement is that the Form 24 must be accompanied by a statement setting forth the grounds on which review or setting aside is sought.
Key drafting elements
Precise identification: the decision or order being challenged (date, number, subject matter).
Clear statement of facts and timeline.
Grounds for review - see next section.
If review is sought for a decision affecting other parties, note that Controller must forward your grounds to them.
Signature by the applicant or registered patent agent (as authorized).
Care must be taken to present the case compactly and convincingly, as the Controller will not entertain mere re-argument of prior submissions without sufficient basis.
Grounds for Review / Setting Aside
The grounds permitted under the statutory and rule framework mirror classical principles of review in civil procedure. Broadly, these grounds are:
Discovery of new and important matter or evidence, which, despite due diligence, was not available at the time of the decision.
Mistake or error apparent on the face of the record - e.g. a manifest error, misapplication of law, arithmetic mistake, or oversight.
Any other sufficient reason- this is a catch-all, used sparingly, but may include procedural irregularity, extenuating circumstances, or newly emergent legal point.
In setting aside ex-parte orders (clause g), similar grounds must be invoked - e.g. you were unaware due to bona fide reasons, or the order was passed in error without hearing you.
Because the review power is not an appeal, the Controller will not re-weigh evidence or entertain wholly new grounds not hinted earlier. The application should focus on new evidence, clear mistakes, or procedural defects.
Procedure & Controller’s Action
The Controller considers the application under Form 24 and the accompanying grounds.
If other persons are affected, their copy and opportunity to respond must be provided.
The Controller may hold a hearing, ask for responses, and evaluate whether the review or setting aside is justified.
If satisfied, the Controller may alter, correct, or reverse the earlier decision or order.
If refused, the original decision/order stands.
Once the decision on review is given, no appeal lies under Section 117A in respect of the review decision.
Thus, this is often the last chance before seeking judicial recourse (e.g. writ petition in High Court) if one believes the Controller’s review was unreasonable.
Strategic and Practical Considerations
Timeliness is critical: Do not delay. The one-month clock starts on communication, and extension is short.
New evidence must be strong and relevant: Weak or cumulative evidence is less likely to succeed.
Error must be clear: An “error apparent on the face of record” is not every error - it is something manifest and indisputable.
Avoid simply restating your original argument: The review must bring something extra (new fact, procedural lapse, or clear error).
Ensure procedural correctness: Forwarding to other parties, proper signatures - any slip may lead to rejection on technical points.
Prepare for possible oral hearing: The Controller may request submissions or clarifications.
Assess cost-benefit: If chances of success are low, consider whether direct judicial challenge (High Court) is more appropriate.
Comparison with Civil Review & Appeal
In civil courts, review (Order 47, Rule 1 of CPC) is available only for limited grounds (new evidence, mistake etc.). The Controller’s power under Section 77(f) is analogous.
But unlike civil review, no appeal lies from a Controller’s review decision (unless explicitly provided).
Unlike appeal, review is not a re-hearing. The standard is more constrained — incremental correction, not a fresh trial.
FAQs
Q. Can I use Form 24 to reargue all points I lost earlier?
A. No. The Controller expects new evidence, manifest errors, or procedural irregularity. Simply rearguing standard points without fresh basis is unlikely to succeed.
Q. If I miss the one-month window, am I out of options?
A. Possibly - extension (via Form 4) may salvage some cases if applied within the next month. Beyond that, your recourse is usually judicial (High Court writ).
Q. Does using Form 24 prevent me from appealing later?
A. Use of Form 24 does not itself bar any statutory appeal in cases where appeal is permitted. However, you cannot appeal the outcome of a review under Section 77.
Concluding Takeaways
Form 24 is a powerful procedural tool in patent proceedings in India for correcting mistakes, introducing new evidence, or seeking fairness when a party was unheard (ex-parte). Yet, being final in its domain, it demands meticulous drafting, strong factual grounds, and strict adherence to timelines.
Before filing, it is crucial to weigh whether a review makes strategic sense or whether alternative remedies in court may be more fitting given your facts.
