Your patent lapsed because your agent never properly told you the examination report had arrived. Should you lose the invention? The Delhi High Court said no — and went further, ordering the IP Office to build a Code of Conduct for patent and trademark agents.
The facts
In Saurav Chaudhary v. Union of India, an applicant’s patent for a “Blind-Stitch Sewing Machine” was abandoned for missing the six-month FER deadline:
- Application filed 3 Aug 2019; examination requested 21 Feb 2022; FER on 29 Apr 2022; response due 29 Oct 2022.
- The applicant said repeated follow-up emails to the firm went unanswered; the application lapsed.
- On 28 Jan 2023 the applicant sought revival and filed a writ, relying on European Union v. Union of India to seek condonation.
The agent claimed he told the applicant of the FER by phone (no email record), and that he never received a Power of Attorney. The Controller General argued the FER was online, so the applicant could have checked it.
What the court held
Justice Prathiba M. Singh revived the application:
- There was no evidence the FER was communicated after issuance, and the applicant’s unanswered emails showed negligence by the agent.
- Given the technical complexity of FER objections, a phone call alone was inadequate diligence.
- Online availability is not sufficient notice — many inventors lack the resources/expertise to access and interpret it, which is exactly why agents are retained.
- Following European Union v. UOI, an agent’s mistake is treated like legal counsel’s mistake; the applicant showed no intent to abandon, so “extraordinary circumstances” justified condonation under Rule 138’s purpose.
The court rescinded the abandonment, directed the office to consider revival, and allowed the FER response within four weeks. Its principle: “if the legal professionals are at fault, the parties cannot be made to pay the price.”
The bigger order: a Code of Conduct
The court noted the Patents Act lacks a definition of “professional misconduct” for agents. Citing Section 130 of the Act and Rule 114 (which let the Controller remove agents for misconduct), Justice Singh directed the CGPDTM to develop and consult on a Code of Conduct for agents (to be notified by 31 December 2024), constituted an ad-hoc complaints committee in the interim, and ordered an inquiry into the agent’s conduct.
The takeaways
- Agent negligence can be excused against the client — a diligent applicant should not lose rights to a professional’s failure.
- Phone-only, undocumented communication is risky — agents should confirm FER/deadlines in writing.
- “It was online” is no defence to a failure to advise — that is the point of retaining an agent.
- Accountability is coming — a formal Code of Conduct for IP agents changes the landscape. (Compare the Rule 137 condonation ruling.)
Frequently asked questions
Can a patent be revived if my agent’s negligence caused the lapse? Yes — the Delhi High Court revived one where the agent failed to properly communicate the FER, holding the client should not pay for the professional’s fault.
Is the online availability of the FER sufficient notice? No. The court held that inventors retain agents precisely because they may not be able to access and interpret technical reports themselves.
What did the court order about agent conduct? It directed the CGPDTM to create a Code of Conduct for patent and trademark agents and to inquire into the agent’s conduct, using Section 130 / Rule 114.
How should agents communicate deadlines? In writing — a documented email confirming the FER and deadline, not a phone call alone.
Legislation referred to
- The Patents Act, 1970