High Court rules Applicants to not suffer for the fault or negligence of the Patent Agent

The Hon’ble High Court of Delhi in the case of Bry-Air Prokon Sagl & Ors. vs Union Of India & Anr.[1], ordered restoration of patent applications, abandoned and lapsed due to non-filing of timely response to the First Examination Report (FER) as well as non-filing of timely renewal fee. The Hon’ble Court, vide the said order asserted that “the position of law that emerges is that Courts while exercising writ jurisdiction have extended the time for filing response to the FER in extraordinary situations, where Patent Agents were found to be negligent in prosecuting the Patent Applications, with no contributory negligence of the Applicant and on showing that the Applicant had a positive intent to prosecute. It is equally settled that ‘Abandonment’ requires a conscious act on the part of the applicant, which would manifest the intention to abandon and no presumptions can be drawn in this respect”.

Moreover, while recognizing that the non-filing of responses as well as the renewal fee was due to the negligence on part of the patent agent, the Court noted that on account of their long association, the Applicant had no reason to doubt the patent agent or to suspect that the input given by him, from time to time, was doubtful. In furtherance of the same, the Court was of the view that “there is no fault or negligence on the part of the Petitioners and therefore, they should not suffer for the fault or negligence of the Patent Agent, and the present case fits into the exception of ‘extraordinary circumstances”.

Background

The present writ was instituted by Bry-Air Prokon Sagl & Ors. (hereinafter the “Petitioners”) challenging the impugned order by the Controller of Patents (hereinafter the “Respondent”) whereby patent applications filed by the Petitioners were deemed abandoned as well as lapsed due to non-filing of timely response to the First Examination Report (‘FER’) and on account of non-filing of the renewal fees.

It was the case of the Petitioners that they had appointed the first Patent Agent to process, prosecute and coordinate six applications and to attend to the renewal of the patent, before the Indian Patent Office. It was further contended by the Petitioners that as a practice general, the Patent Agent would periodically report on the status of the pending applications and patents as also intimate to the Petitioners, if any action was required.

With respect to the application under No. 34/DELNP/2013, it was averred that the FER was issued by the Patent Office on March 22, 2018. However, due to non-filing of response to the FER, the application was deemed to be abandoned on April 04, 2019. Subsequently, the European Associates of the Petitioners informed the first Patent Agent about the abandonment, who in turn took a position that he had not received the FER. Subsequently, he informed the European Associates that he had sent a formal letter to the IPO, intimating the non-receipt of the FER and requesting for re-issuance of the same. Thereafter, correspondence was exchanged between the Petitioners, the first Patent Agent and the foreign associates and all through the Petitioners were given the impression that the first Patent Agent was actively pursuing the matter at the IPO and the delay was on account of ill health of the IPO and the limited functioning of IPO on account of COVID-19. With respect to the remaining five patent applications, the Petitioners contended that these applications were also abandoned and lapsed due to non-filing of response to FER as well as renewal fee, which was also due to admitted negligence on part of the patent agent and not the Petitioners.

Petitioners also affirmed that they had a long association with the first Patent Agent since the year 2012 and had a reasonable expectation that he would comply with the standing instructions of the Petitioners for prosecuting the applications, within the stipulated timelines and deadlines. Moreover, it was alleged by the Petitioners that based on the information given by the first Patent Agent, they were made to believe that he was meticulously following up the matter with the IPO including initiation of steps for restoration of the applications and the patent, which was evidently not the case. All correspondence between the Petitioners, their foreign associates as well as the first patent agent was placed on record to corroborate the claims of the Petitioners.

Findings of the Court

The Court, while placing reliance on the judgment of European Commission v. Union of India and Others, 2022 SCC Online Del 1793 held that “the patent applications were deemed to have been abandoned on account of the negligence of the Patent Agent in not filing reply to the FER within the stipulated timelines and the contention of the Applicant was that despite continuous follow up, the Patent Agent had not responded and the delay was not attributable to the Applicant. Condonation of delay in filing the reply was sought contending that valuable rights in the patents had been lost for no fault of the Petitioner”.

It was further observed that the “Courts while exercising writ jurisdiction have extended the time for filing response to the FER in extraordinary situations, where Patent Agents were found to be negligent in prosecuting the Patent Applications, with no contributory negligence of the Applicant and on showing that the Applicant had a positive intent to prosecute. It is equally settled that ‘Abandonment’ requires a conscious act on the part of the applicant, which would manifest the intention to abandon and no presumptions can be drawn in this respect. It also needs no reiteration that deemed abandonment of the application for grant of patent, leads to serious impact on the valuable rights of the patent applicant, which flow in favour of an invention and this is compounded by the fact that under the statutory scheme, no appeal is provided against an order of deemed abandonment of the application for patent under Section 21 of the Act. Therefore, each case would require examination on its own facts and circumstances to see the intent of the applicant to abandon”. In the present case, as per the findings of the Hon’ble Court, there was no intent on part of the Petitioners to abandon their patent applications and thus, they cannot suffer due to the fault of the patent agent.

The writ was accordingly decided in favor of the Petitioners. In light of the same, the patent applications bearing nos. 1446/DEL/2010, 3735/DEL/2011, 178/DEL/2012, 34/DELNP/2013, 81/DEL/2014 were ordered to be restored to their original position and the Petitioners were permitted to file their response to the FERs, within a period of 4 weeks from the day of the order. Insofar as the patent IN293448 is concerned, upon the Petitioners filing restoration application time was granted by the court to complete the necessary formalities and on completion of the same, the Patent Office was directed to consider revival/restoration of the patent in accordance with the Act and Rules.

Conclusion

Orders of this nature play a significant role in protecting the rights of the Applicants against negligence on part of patent agents, who have been entrusted with the responsibility to diligently manage their IP portfolios. This order is an extension to the principle laid out by the Hon’ble Supreme Court in a number of decisions that as far as any mistake committed by counsels/advocates are concerned, the settled legal position is that the litigants ought not to suffer.

[1] W.P.(C)-IPD 25/2022