Abandonment of a patent application requires a conscious act; negligence of a Patent Agent should not penalize the applicant if there is no contributory negligence.

JUDGMENT

1. The petitioner filed Indian Patent Application No. 4154/DEL/2015 (hereinafter referred to as “subject application”) on 18.12.2025. The said subject application was then published on 19.01.2018. Thereafter, on 18.12.2019, though it was the due date for filing Form 18 of the Patents Act (hereinafter “Act”) for request for examination of the subject application, despite best efforts, the erstwhile Patent Agent who was handling the portfolio of the petitioner failed to file the said Form 18 (Request for examination of the application for patent). This was also despite that the petitioner was assured that the said erstwhile Patent Agent had taken all the requisite actions with respect to the subject application and status “Deemed to be withdrawn u/s 11B(4)” thereof as reflecting on the official website “https://ipindia.gov.in/trade-marks.html” of the respondent no.2 was incorrect and furthermore that the said erstwhile Patent Agent was in contact with Office of the respondent no.2 for rectifying the records pertaining to the subject application.

2. After going through the entire portfolio handled by the erstwhile Patent Agent, the petitioner found that many of its patent applications had been abandoned or had lapsed due to non-renewal. Upon deliberations, with the erstwhile Patent Agent regarding the petitioner’s loss of rights and the matrix of events, the said erstwhile Patent Agent gave/ provided an affidavit dated 26.02.2022 confirming that the petitioner had no fault or intention to abandon any of the applications/ patents, stating therein as under:-

“7. That the non-response to the First Examination Report dated …. is due to no fault of the Applicants particularly since it was not received either by email or regular post.”

3. Based thereon and the surrounding factors, the petitioner had been able to reinstate various patent application all over the world. In fact, the very same petitioner had also filed Bry-Air Prokon SAGL & Ors v. Union of India & Anr. [ WP (C)-IPD No. 25 of 2022 ] before this Hon’ble Court which was duly allowed in its favour vide order dated 17.10.2022. As a result, seven of its other similarly situated patent applications as also other patent granted to the petitioner, were reinstated. In fact, it is recorded in the said judgment that the petitioner herein was not negligent or did they have any intention to abandon their patent application.

4. In the interregnum, the European Patent (EP) No. 16845330, which is corresponding to the application that is the subject of the present writ, which was also abandoned for the same reasons, has since been reinstated vide order dated 31.05.2023 passed by the European Patent Office.

5. Now, the instant subject application of the petitioner has been jeopardized for no fault of theirs, more so, since the petitioner has already spent a huge amount of money for the reinstatement thereof.

6. Consequently, faced with the aforesaid situation, the petitioner has filed the present writ petition seeking quashing of the status update of “Deemed to be withdrawn u/s 11B(4)” issued by the respondent no.2 for the subject application of the petitioner as it was deemed to be withdrawn under Section 11B (4) of the Patents Act (hereinafter “Act”) for non-filing of a request for examination of the patent application within the time specified as also a direction to the respondent No.2 to restore the said subject application to its original position and afford an opportunity to the petitioner to file FORM 18 (Request for examination of the application for patent) of the Act, so that the Indian Patent Office can proceed with the examination of the patent application no. 4154/DEL/2015, as the IPO normally would thereafter.

7. As per the petitioner, the aforesaid non-filing and the subsequent issuance of order under Section 11B(4) of the Act is wrong since the petitioner had every intention of complying with the statutory timelines mandated by the Act. However, it was only because of erst