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  • Writer's pictureNanki Arneja

High Court restores patent applications abandoned due to mistake of patent agent, creates exception


India: Delhi High Court carves out exception to ‘deemed abandonment’ provisions in a landmark decision, restores patent applications abandoned due to mistake of the agent in non-filing of response to First Examination Report



In a recent important development in India in the writ petitions titled as The European Union Represented by The European Commission vs. Union of India and Others, the Hon’ble Delhi High Court vide its decision dated May 31, 2022, directed restoration of two patent applications (11123/DELNP/2012 and 3466/DELNP/2013) citing exceptional circumstances and prejudice due to ‘deemed abandonment’ provisions under the Indian Patent law.

The Controller General of Patents treated the Patent Applications numbered 11123/DELNP/2012 and 3466/DELNP/2013 as ‘deemed to have been abandoned’ under Section 21(1) of the Patents Act, 1970 in view of non-filing of Reply to First Examination Report (“FER”) in respect of the applications. The applicant i.e., The European Union Represented by The European Commission, preferred writ petitions on the ground that the delay in filing the reply to the FER was completely not attributable to the Petitioner and despite continuous follow-up, the patent agent had not responded to the enquiries made by the Petitioner. It was argued that under these circumstances, the delay in filing the responses, deserves to be condoned as the Petitioner’s valuable rights in the patents have been completely lost due to the negligence of the patent agent which could not have been the fault of the Petitioner.

The Hon’ble Court noted that the present writ petitions highlight the role of patent agents in prosecuting patent applications and the mistake of a patent agent would be similar to the mistake of an advocate for which the position is clear that no litigant shall suffer for the mistake of an advocate. The Hon’ble Court took into consideration the scheme of the Patents Act, 1970 and the Patent Rules 2003 as well as various Judicial precedents passed by courts with respect to condonation of delay and held that “it is convinced that there was no intention to abandon on behalf of the Petitioner, instead, the Petitioner’s actions indicate that they were actively pursuing the application. Moreover, the judicial opinion in respect of responses to FER or other deadlines seems to suggest that if the Applicant did not have an intention to abandon and if the Court is convinced that there was a mistake of the patent agent and the Applicant is able to establish full diligence, the court ought to be liberal in its approach.”.

The Hon’ble Court also held that the consequences of a patent being abandoned is quite extreme i.e., the Applicant is deprived of exclusivity for the invention completely. In the opinion of the Court, such a consequence ought not to visit the Applicant for no fault of the Applicant. The Hon’ble Court also relied on the 161st report submitted by the Department Related Parliamentary Standing Committee on Commerce on 23rd July, 2021, titled ‘Review of the Intellectual Property Rights Regime in India’ where the Committee has taken note of the enormous prejudice being caused to patent applicants due to `deemed abandonment’ provisions. The Committee had opined that the abandoning of patents would de-moralize or discourage patentees in India.

Therefore, in view of the judicial precedents and spirit of the Parliamentary Standing Committee’s report, the Hon’ble Court directed the response to FERs to be taken on record and restored the abandoned applications to its original position citing exceptional circumstances and owing to peculiar facts.

By way of the present decision, the Hon’ble Court has carved out an exception with respect to the ‘deemed abandonment’ provisions under Indian Patent law to safeguard and protect the rights and interests of Patentees and Applicants against bonafide mistakes and errors. The court’s protection extends to any extraordinary circumstances such as negligence by the patent agent, docketing error and where the Applicant has been diligent.


The present decision is expected to play an instrumental role in protecting right holders against any erroneous and inadvertent abandonment of patent applications.

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