Protecting Patent Rights from Procedural Lapses: Key Takeaway from Bry-Air vs. Union of India

The Hon'ble High Court of Delhi in the case of Bry-Air (Asia) Pvt. Ltd. vs. Union of India, ordered restoration of Indian Patent Application No. 4154/DEL/2015 withdrawn due to non-filing of timely Request for Examination. This judgment highlights the Court's pivotal role in protecting Applicants from the consequences of procedural lapses attributed to the Patent Agents. It reaffirms that patent rights should not be unjustly compromised due to negligence of the Patent Agents.

Facts of the case

The petitioner, Bry-Air (Asia) Pvt. Ltd., filed an Indian Patent Application No. 4154/DEL/2015 on December 18, 2015. The due date for filing a Request for Examination was on December 18, 2019. Despite Bry-Air’s every intention of complying with this statutory timeline, the erstwhile Patent Agent failed to file the Request for Examination by the deadline. Consequently, the Application status was marked as “deemed to be withdrawn” under Section 11B(4) of the Patents Act, 1970.

Bry-Air contended that they had diligently followed up with their erstwhile Patent Agent, and they assured them that all necessary steps had been taken. Bry-Air further asserted that several of their patent applications, handled by the erstwhile Patent Agent, had either lapsed or been abandoned due to similar procedural failures, some of which were later reinstated by the Courts. Relying on the supporting facts, Bry-Air petitioned the court, seeking to quash the withdrawal status and reinstate the Application in dispute.

Arguments advanced

In its petition, Bry-Air argued that the deemed abandonment was the result of its erstwhile Patent Agent’s negligence and not reflective of the petitioner’s intent, which had consistently been to pursue the Application. While citing precedents, the counsel for the petitioner asserted that procedural lapses due to the Agent’s error should not lead to a forfeiture of rights, particularly in the absence of contributory negligence by the applicant.

The Court’s attention was drawn to established jurisprudence that distinguishes between abandonment and unintentional procedural default. In both Bry-Air Prokon SAGL & Ors v. Union of India & Anr. [WP (C)-IPD No. 25 of 2022] and The European Union Represented by The European Commission V. Union of India & Ors. [W.P.(C)-IPD 5/2022 & 6/2022], it was held that “deemed abandonment” requires clear evidence of the applicant’s intent to discontinue prosecution and should not be presumed based on an Agent’s error. Such a presumption, it was argued, would unfairly penalize applicants who have shown an active interest in protecting their patent rights.

Ratio

Hon’ble Justice Banerjee while relying on previous judgements, emphasized that judicial intervention is warranted in cases where Applicants are likely to suffer from an Agent’s negligence and absent contributory fault on their part. The Court noted that Bry-Air had engaged with its erstwhile Patent Agent regularly and had taken substantial steps, including significant financial expenditures, to protect and restore applications. Given these circumstances, the Court found that Bry-Air’s intention to prosecute its application was unequivocally established.

The judgment further elaborated on the concept of “deemed abandonment” within the Patents Act, noting that the intent behind this provision is not to punish Applicants who have demonstrated diligence in prosecuting their applications. Justice Banerjee observed that the statutory provisions must not be so inflexible as to deprive applicants of their rights without considering their intent and actions. Consequently, the Court ruled in Bry-Air’s favour, directing that the status of the Application be restored to its original position and allowing the petitioner to file Request for Examination so that the examination could proceed.

Conclusion

The Court’s decision holds significant implications for patent law practice, particularly concerning the duties and responsibilities of Patent Agents. The judgment underscores that the Applicant(s) should not suffer loss of rights due to the Agent’s errors when there is clear evidence of the Applicant’s proactive engagement and intent. By acknowledging, the undue hardship caused by procedural rigidity, the ruling affirms the judiciary’s commitment to fairness in exceptional circumstances.

For Patent Agents, this judgment serves as a pertinent reminder of the fiduciary duty owed to clients, especially in ensuring strict compliance with procedural timelines. The Court’s stance underscores the importance of reliability and thoroughness, given the consequences that procedural negligence can impose upon an Applicant’s rights. It further emphasizes that while Patent Agents function as intermediaries, the judiciary expects them to uphold the highest standards of professional diligence and accountability.

For Applicants, the ruling is an instructive precedent, underscoring the importance of regular communication and vigilance over the status of their applications. In cases where procedural missteps are attributable to Agent’s negligence rather than Applicant’s fault, this judgment illustrates that Courts are inclined to act in the interest of preserving substantive rights, provided there is sufficient evidence of diligence and intent to prosecute on the Applicant’s part.

Reference:

• Bry-Air (Asia) Pvt. Ltd. vs. Union of India [W.P.(C)-IPD 17/2024]