In a recent decision, the Delhi High Court addressed a petition challenging the abandonment of a patent application for a “Blind-Stitch Sewing Machine and Method of Blind Stitching.” The petitioner sought to restore the patent application on the account of misconduct and negligence by their Patent Agent which resulted in their patent application being abandoned. Justice Pratibha M. Singh who had presided over the case, emphasized the need for a Code of Conduct for Trademark and Patent Agents to ensure liability over their actions. This article delves into the arguments presented by both parties, the court’s analysis, and the regulatory recommendations aimed at fostering professionalism and diligence within the Patent and Trademark Agent community.

Argument of the Plaintiff:

The petitioner had sought legal assistance through the firm M/s Delhi Intellectual Property LLP for the grant of the patent application, “Blind-Stitch Sewing Machine and Method of Blind Stitching.” The patent application was filed on August 3, 2019, followed by a request for examination on February 21, 2022. The First Examination Report (FER) was issued on April 29, 2022, requiring a response within by October 29, 2022. However, the petitioner alleged that despite repeated follow-ups over email, they had received no communication from the firm and later discovered that the application was abandoned as there has been no response within the deadline of six months for the FER. The petitioner then sought to restore the application through a revival request form on January 28, 2023 and through the present writ petition citing the case of European Union Represented by the European Commission v. Union of India and Ors., for the Hight Court to exercise power to condone the delay.

Argument of the Defendants:

Mr. Naveen Chaklan who was the former patent agent for the petitioner argued that that he had intimated the petitioner of receiving the FER, however, he was not at fault as he did not get instructions from the client on how to proceed with the matter which resulted in the abandonment of the application. He proceeded to say that correspondence with the petitioner was only through telephonic calls, and he did not send any emails to evidence that he had reported the issuance of the FER. The defendant also alleged that he had never received the Power of Attonery from the petitioner. Further, on behalf of the Controller General of Patents, Designs, and Trademarks (CGPDTM), the lawyer argued that the case of European Union represented by the European Commission could not be used as the FER was available online and the Petitioner had an opportunity to check.

Court’s Analysis and Decision:

The Court found the firm had failed to properly communicate the issuance of the FER to the petitioner. As there was no evidence of any communication after the FER was issued, and the petitioner’s follow-up emails went unanswered. The Court noted the detailed and technical nature of the objections in the FER and held that a telephonic discussion alone was insufficient, and is a display of a lack of diligence.

The Court rejected the argument that the FER’s availability on the IP office website was sufficient notice, given that many inventors may lack the resources and expertise to access and understand the information online which is also the reason as to why patent agents are engaged in the first instance.

Acknowledging the petitioner’s prompt action to restore the patent, the Court cited the case of European Union v. Union of India (2022) to emphasize that mistakes by agents should be treated akin to those by legal counsels. The Court determined that the present case constituted “extraordinary circumstances,” as the petitioner’s action had shown that he had no intention to abandon the application hence warranting flexibility in deciding on condonation of the delay which the Court cited to be the legislative intent of Rule 138.

The Court ordered the patent office to consider the revival request and set aside the abandonment order as there had been no fault on the petitioner. The Court further directed that the FER response to be accepted within four weeks after the abandonment order is updated on the website. The Court highlighted that if the legal professionals are at fault the parties cannot be made to pay the price and stressed the need for a Code of Conduct.

Regulatory Recommendations: The Court noted the absence of the definition of ‘professional misconduct’ for patent agents in the Patents Act, 1970, and recommended the development of a proper regulatory framework. The Court referred to section 130 of the Patent Act and Rule 114 of the Patent Rules, 2003, which empowers the Controller to remove agents guilty of professional misconduct. Justice Prathiba Singh issued a directive which mandated the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) to draft and consult on a Code of Conduct for agents, which is to be notified by December 31, 2024. An ad-hoc committee was appointed to handle complaints until a formal framework is established. The Court ordered an inquiry into the conduct of the petitioner’s original patent agent, with a report due within four months. The petition was disposed of with these directives, aiming to enhance accountability and professionalism among patent and trademark agents.

This decision signals a crucial step towards ensuring accountability and professionalism among Patent and Trade Mark Agents in the country. The court’s decision to set aside the abandonment of the patent application, citing the petitioner’s proactive efforts and the failure of effective communication by the Patent Agent, highlights the importance of clear communication between clients and agents. By mandating the introduction of a Code of Conduct for Patent Agents and Trade Mark Agents by December 31, 2024, the court aims to establish clear standards of conduct and accountability and also prevent similar lapses in the future.

Written by Shehnaz Latheef