Restoration Of Abandoned Patent Applications Due To Negligence Of Patent Agents: A Perspective Into The Accountability Of Patent Agents
“In an adversarial proceeding when a litigant is dependent on the advice of the advocate, he should not suffer for any wrong advice or delay and laches on the part of the advocate conducting the litigation.”
-Justices Hiranmay Bhattacharyya and Soumen Sen
The afore-mentioned statement held by the Calcutta High Court in the case of Malati Mitra v. The State of West Bengal & Ors., aptly elucidated that an erroneous act of the advocate should in no manner affect or cause agony to the litigant. Application of the same principle is required with regards to intellectual property disputes as well, especially in the arena of Patents wherein a specialised professional (Patent Agent) is involved.
The article probes into the recent Delhi High Court judgment of The European Union Represented by The European Commission v. Union of India and Ors., dated May 31, 2022. The Court had held for the restoration of two patent applications stating that present set of facts were exceptional and “deemed abandonment” provisions under The Patents Act, 1970.
Brief Factual Matrix-
Two patent applications namely- 11123/DELNP/2012 and 3466/DELNP/2013 were deemed to have been abandoned as under Section 21(1) of the Patents Act, 1970 owing to the non-filing of Reply to the First Examination Report. The applicant in the current case had filed writ petition to the High Court on the ground that despite maintaining a constant correspondence with the patent agent, the agent was negligent and had not responded to the enquiries put forth by the petitioner.
Critical Anatomization of the case: Condonation of filing delays due to inadvertent abandonment
The applicants in the said matter propounded that under the current set of facts and the position that they were thrusted in, the delay in filing of the FER responses can be considered for condonation as the inability to file the reply to FER was due to the inadvertency and negligent actions of the patent agent. They further stated that non-condonation of such a delay might hamper the applicant from effectuating his invaluable rights when the issue at hand is clearly not due to the fallacy of the applicant.
Section 21(1) of the Patents Act, 1970 propounds that an application would be deemed abandoned if the applicant fails to comply with the conditions prescribed in the Act. The section provides that when the first examination report is notified to the applicant by the Controller, the applicant is expected to file the reply within 3 months. If the applicant has failed to file the reply to the FER, then such an application would be deemed abandoned.
In the author’s viewpoint, Patent protection rights begins with the administrative authority of the Indian Patent Office. The Controller General of Patents is the sole and primary adjudicator with regard to the granting and renewal of patents. In a scenario where patent applicants fail to meet the procedural requirements as prescribed under the Patents Act, albeit unintentionally, the Patents Act awards discretionary powers to the in view of the principles of natural justice. For an inventor, their patent rights are secured by the Controller’s power to restore, grant and refuse a patent. Under this umbrella, the controller’s power to condone delays and irregularities in the patent process is a key factor of enforcing patent rights.
The discretionary power of the Controller has been elaborated in the judgment of Universidad Politechnica De Valencia v. Union of India & Ors., wherein the Court propounded that the Controller’s discretionary powers are subject to the provisions of fair hearing by virtue of principles of natural justice. Hence, the applicants must be given a fair chance to a hearing before the application is abandoned.
In addition, in the cases of Ferid Allani v.Union of India, Telefonaktiebolaget Ericsson v. Controller of Patents, PNB Vesper Life Sciences v. Controller General of Patents, and Rubicon Research Pty Ltd. v. The Controller General of Patents & Ors., the court held and reiterated that “abandonment” would require a conscious act of the applicant that would depict the intention of the applicant to abandon the application.
The Hon’ble Court taking due regard of the role of the patent agent in the above case, illuminated that role of the patent agent in a patent filing process is similar to that of the role of an advocate in a litigation. The principle of “No litigant shall suffer for the mistake of an advocate” should be made applicable.
Decision of the Court-
The Delhi High Court, hence took the layout of Patents Act, 1970 and the Patent Rules, 2003 and various judicial authorities passed with regards to condonation of delay and held that since there was no intention on behalf of the applicant to abandon the patent, and since the failure to file the reply to the FER was solely due to the erroneous activity of the Patent Agent, the Court would be liberal in its approach and restore both the patent applications owing to the peculiar set of facts and exceptional circumstances.
The current decision carves out a new and innovative viewpoint with regards to “deemed abandonment” provision enshrined in the Indian Patent law which would protect the vested interests of the patent applicants that the Act strives to achieve. It also highlights the need to protect the applicants and their inventions against bonafide errors and fallacies, by extending the ambit to a situation such as negligence by the patent agent wherein the applicant has been duly diligent. The present decision would map out and play a significant role in protecting the rights of the patent applicants from flawed abandonments of patent applications.
Author: Haritha Dhinakaran – a student of Symbiosis Law School (Pune), currently an intern at Global Patent Filing, in case of any queries please write back us via email at firstname.lastname@example.org.
 Universidad Politechnica De Valencia v. Union of India & Ors., WP (C) 1435 of 2007.
 Ferid Allani v.Union of India, 2008 (37).
 Telefonaktiebolaget Ericsson v. Controller of Patents W.P (C) 9126 of 2009.
 PNB Vesper Life Sciences v. Controller General of Patents, W.P 22253 of 2021.
 Rubicon Research Pty Ltd. v. The Controller General of Patents & Ors., OA/18/2014/PT/KOL.