Introduction

The High Court of Delhi recently adjudicated a pivotal case involving the abandonment of a patent application, which has significant implications for patent law and the responsibilities of patent agents. The petitioner, Saurav Chaudhary, challenged the abandonment of his patent application titled “Blind-Stitch Sewing Machine and Method of Blind Stitching.” The case was represented by Adv. Mr. Samrat S. Kang, a former member of J.P. Associates, who played a crucial role in the legal proceedings.

Background of the Case

Saurav Chaudhary filed his patent application on August 3, 2019, through the firm “M/s Delhi Intellectual Property LLP,” with Mr. Naveen Chaklan serving as the primary patent agent. The application process proceeded without incident until the issuance of the First Examination Report (FER) on April 29, 2022, which required a response within six months. Despite repeated follow-ups by Chaudhary, the response was not filed, leading to the application being deemed abandoned.

Chaudhary’s persistent attempts to contact the patent agent were documented, showing a series of emails and calls that went unanswered. It was only when Chaudhary engaged a new patent agent and filed a request for restoration on January 28, 2023, that he could seek legal redress for the abandonment.

Legal Arguments

The petitioner’s counsel argued that the abandonment was due to the negligence of the patent agent and not due to any fault on the petitioner’s part. They cited the case of European Union Represented by the European Commission v. Union of India and Ors. (2022), arguing that in exceptional circumstances, the High Court has the power to condone delays under Article 226.

The petitioner’s counsel emphasized the continuous but unreciprocated follow-ups with the patent agent, highlighting emails and calls made from March 15, 2022, to January 8, 2023. They contended that the patent agent’s lack of response and failure to inform Chaudhary about the FER led to the abandonment of the application.

On the other side, Mr. Naveen Chaklan, the patent agent, claimed that he had communicated the issuance of the FER through telephone calls, but admitted there was no written or email confirmation of this crucial information. He also stated that no power of attorney was given by the petitioner, which was countered by evidence of payment for the examination request.

Court’s Analysis and Decision

Justice Prathiba M. Singh, presiding over the case, meticulously analyzed the sequence of events and the communications between the petitioner and the patent agent. The Court found the patent agent’s conduct lacking in diligence and professionalism. The absence of written communication about the FER and the failure to respond to the petitioner’s emails were deemed significant lapses.

The Court underscored that an FER is a highly technical document requiring detailed discussions and cannot be adequately addressed through brief phone calls. The patent agent’s responsibility includes ensuring that the inventor is fully informed and that all procedural requirements are met to protect the invention.

Citing the European Union Represented by the European Commission v. Union of India & Ors. case, the Court recognized that mistakes by patent agents should not penalize diligent inventors. It emphasized the need for a liberal approach in exceptional cases where the applicant demonstrates due diligence and the fault lies with the patent agent.

The Court also referred to the 161st report by the Department-Related Parliamentary Standing Committee on Commerce, which highlighted the prejudice caused to patent applicants due to the rigid ‘deemed abandonment’ provisions. The report recommended incorporating flexibility in the Patent Act to allow for minor errors and lapses.

Delhi High Court’s Order to CGPDTM

One of the most significant outcomes of this case was the directive given by the High Court of Delhi to the Controller General of Patents, Designs, and Trade Marks (CGPDTM). The Court ordered the CGPDTM to frame a code of conduct for patent agents to prevent such lapses in the future. This code of conduct is expected to include several key elements:

1. Mandatory Written Communication: Patent agents will be required to communicate all significant updates, such as the issuance of FERs, in writing. This will ensure that there is a clear record of all communications and that applicants are fully informed of the status of their applications.
2. Regular Follow-Ups and Updates: Patent agents must establish a system for regular follow-ups and updates to their clients. This includes timely responses to client inquiries and proactive communication regarding deadlines and procedural requirements.
3. Professional Accountability: The code of conduct will include provisions for holding patent agents accountable for negligence and lapses in their duties. This may involve disciplinary actions or penalties for agents who fail to meet the required standards of professionalism and diligence.
4. Client Education and Support: Patent agents will be encouraged to provide their clients with adequate education and support regarding the patent application process. This includes explaining technical documents like the FER and assisting clients in understanding and fulfilling procedural requirements.
5. Documentation and Record-Keeping: Agents will be required to maintain detailed records of all communications and actions taken on behalf of their clients. This will help ensure transparency and accountability in the patent application process.

Conclusion

In conclusion, the High Court of Delhi ruled in favor of Saurav Chaudhary, allowing the restoration of his patent application. The Court’s decision underscores the importance of the diligent conduct of patent agents and the necessity for a more flexible approach in handling patent application processes. The directive to CGPDTM to frame a code of conduct for patent agents is a significant step towards improving the integrity and efficiency of the patent system in India.

This case highlights the critical role of legal representation in navigating complex patent laws and the importance of accountability and professionalism among patent agents. The Court’s ruling serves as a reminder of the responsibilities of patent agents to their clients and the need for continuous improvement in the procedures governing patent applications.

Future Directions

This case sets a significant precedent for future patent litigation in India. It calls for:

1. Enhanced Accountability for Patent Agents: There should be stricter guidelines and accountability measures for patent agents to ensure they fulfill their responsibilities effectively.
2. Flexibility in Patent Laws: The government should consider amending the Patent Act to incorporate provisions for condoning minor errors and allowing for the restoration of applications in genuine cases of oversight.
3. Improved Communication Mechanisms: There should be mandatory requirements for written communication from patent agents to their clients regarding critical updates like the issuance of FERs.
4. Increased Awareness Among Inventors: Inventors should be educated about their rights and the procedural aspects of patent filings to ensure they are better equipped to monitor the status of their applications.

The High Court’s directive to CGPDTM to establish a code of conduct is a crucial step toward ensuring that patent agents adhere to the highest standards of professionalism, thereby protecting the interests of inventors and the integrity of the patent system.

Authored By: Ms. Swati Agrawal