Summary: The Controller General of Patents has ordered the removal of a patent agent from its register, following a committee report on his professional misconduct. The report was made following directions from the Delhi High Court in a case where the applicant raised concerns about their agent.
In an uncommon decision, the Controller General of Patents, Designs, and Trademarks (CGPDTM) ordered the removal of a patent agent, from the Register of Patent Agents on January 1, 2025. This decision was taken due to the agent's alleged professional misconduct, following recommendations from an ad hoc committee constituted by the Department for Promotion of Industry and Internal Trade (DPIIT) to address complaints against patent or trademark agents. The ad hoc committee had been formed following the Delhi High Court's directions in Saurav Chaudhary vs. Union of India, (W.P.(C)-IPD 9/2023). This decision underscores the importance of professional conduct and accountability for patent agents.
Case Background
In this case, the authorized patent agent failed to inform the applicant / Petitioner of the First Examination Report (FER) having been issued in respect of their patent application. Consequently, the reply to the FER was not filed in time, and the application was deemed abandoned. The Petitioner later engaged a new patent agent, and requested for restoration of the application, resulting in the present matter.
Court findings
- The Delhi High Court noted that the patent agent had clearly not shown diligence in communicating the issuance of the FER to the Petitioner. There was no email from the patent agent to the Petitioner. This negligence directly led to the abandonment of the patent application.
- The Court emphasised that a party should not suffer for the inaction, deliberate omission or misdemeanour of their According to the Court, the present case also fell within the ambit of extraordinary circumstances, with the Petitioner having done his part and duly following up with the agent on application status. In exercising writ jurisdiction, the Court said it should be liberal in cases where mistakes are made by patent agents, and should be treated in a similar manner as made by counsels /advocates.
- The Court highlighted the essential roles and function of patent agents in the effective handling of patent applications. This includes prompt client communication and compliance with procedural guidelines. The Court pointed out that the only authority that can regulate the conduct of the patent agents is the CGPDTM, but there is no procedure for dealing with misconduct by patent a
- Accordingly, the Court set aside the abandonment order, and allowed the Petitioner to submit a reply to the FER. The Court also directed the CGPDTM to hold an enquiry against the patent agent and take appropriate action.
- For generally dealing with complaints against patent and trademark agents, the Court directed the constitution of a committee consisting of at least two officials from the patent/trademark office and a senior IP practitioner (also registered as a Patent/TM Agent, with at least 15 years of practice). The Court also directed that a Code of Conduct be notified by December 31, 2024. However, no such Code of Conduct has been released by the CGPDTM till date.
This may be the first time that the CGPDTM has directed the removal of a patent agent from the register. But it is not the first time where a patent application was reinstated due to agent negligence. Some recent rulings from the Delhi and Madras High Courts shed more light on judicial views on agent misconduct.
Abandonment follows from intent; cannot be presumed
In Bry-Air (Asia) Pvt. Ltd. vs. Union of India (W.P.(C)-IPD 17/2024), the Delhi High Court in September 2024 quashed the "deemed to be withdrawn" status of a patent application for non-filing of a request for examination (RFE) within the specified timeframe. The abandonment had been due to the negligence of the patent agent. The Court restored the application, allowing prosecution to follow due process. Critically, the Court observed that abandonmentper seought not to be presumed, as it is a question of intent. It said that in situations where express intentions and implied actions coupled with overall conduct of the applicant reflect that the applicant was willing to pursue the application in question, the applicant should not be made to suffer and due benefits ought to be extended.
In European Union v. Union of India (W.P.(C)-IPD 5/2022), the Delhi High Court held that the delay in filing responses to FERs arose from the negligence of the patent agent and not because of any disinterest on part of the applicant;there was no intention to abandon, and instead, the applicant's actions indicated that they were actively pursuing the applications. The Court also relied on jurisprudence to conclude that if the applicant did not have an intention to abandon, and if the Court is convinced that there was a mistake of the patent agent and the applicant can establish full diligence, the Court ought to be liberal in its approach.
Extraordinary circumstances
For this purpose, the Court also relied on orders passed in the cases of Ferid Allani v. Union of India [W.P (C) 6836 of 2006], andTelefonaktiebolaget Ericsson v. Controller of Patents and PNB Vesper Life Sciences v. Controller General of Patents, [W.P 22253 of 2021]. These orders provide an exception to the normally mandatory and non-extendable timelines. They state that while the Controller may not have the power to extend the deadline for putting the application in order for grant, Courts may in rare cases permit the same, after examining the facts to assess applicant intention to abandon or not. Extraordinary circumstances could also be considered, such as negligence by the patent agent, docketing error and whether the applicant has been diligent. Importantly, the lack of follow-up by an applicant may lead to an inference that there was intent to abandon the patent.
In Bry-Air Prokon Sagl & Ors. vs Union of India & Anr. (W.P.(C)-IPD 25/2022), the the Delhi High Court ordered the restoration of patent applications which had been abandoned and had lapsed due to non-filing of timely response to the FER as well as non-filing of timely renewal fee. For this, the Court referred to its power extend the time for filing response to FERs in extraordinary situations, where patent agents were found to be negligent in patent prosecution, with no contributory negligence of the applicant and on showing that the applicant had a positive intent to prosecute. The Court also affirmed the settled position on 'abandonment' requiring conscious intent, and that no presumptions can be drawn in this respect.
Additionally, the Court noted that on account of their long association, the applicant had no reason to doubt the patent agent or to suspect that the inputs given by him, from time to time, was doubtful. The Court was of the view that there was no fault or negligence on the part of the applicant and therefore, they should not suffer for the fault or negligence of the patent agent.
In Chandra Sekar vs The Controller of Patents and Designs (W.P Nos 12620 and 12621 of 2021), the Madras High Court set aside the Controller's order dismissing the patent applications for filing the RFE beyond the prescribed period. The Court noted that the delay was due to exceptional circumstances. The Court said that without any demonstrated evidence of intention to abandon, the applicant could not be deprived of their statutory rights merely because the RFE had not been diligently filed by their agent. The Court also noted that the applicant, being a US citizen, was dependent on their Indian agent. After considering the communications between the applicant and the agent, the Court directed that the applications be restored since the lapse was due to the agent's negligence and not the applicant.
In Rubicon Research Pty Ltd. vs. The Controller General of Patents, Designs and Trademarks and Ors., (OA/18/2014/PT/KOL), the erstwhile Intellectual Property Appellate Board (IPAB) set aside the Controller's order and allowed restoration of the patent beyond the 18-month period. In its order, the IPAB observed that the Controller had decided the matter without following principles of natural justice and settled law. The IPAB, on its part, took into consideration the appellant's efforts, applicant agent's negligence, and the potential harm to the patentee if the patent was not restored.
Conclusion
Through their various decisions discussed here, the Delhi and Madras High Courts have established that the negligence or misconduct of patent agents can be a factor in restoring patent applications deemed abandoned. However, in order for such restoration to be granted, applicants must demonstrate that they themselves had no intention to abandon, that there was negligence on the agent's part, and that harm would be caused if the application was not restored. At the very least, applicants should protect their interests by being in regular touch with their agents, keeping track of prosecution timelines independently, and consistently following up on the status of their applications. In the unfortunate instance of timelines being missed, immediate remedial action should be sought.
For patent agents, this series of cases serve as a timely reminder that they need to be extremely vigilant and professional in handling their clients' portfolios, and any demonstrable negligence may lead to undesirable consequences, including being struck off the register altogether. Agents must be cognizant of their role and function in effectively handling applications, and ensure prompt client communication and procedural compliance.
On its part, the CGPDTM would also do well to finalise its Code of Conduct, which would offer additional proper guidance to applicants and agents alike.
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