$~39 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 09^th December, 2024 + W.P.(C)-IPD 7/2024 WATEROTOR ENERGY TECHNOLOGIES INC .....Petitioner Through: Mr. Gaurav Miglani, Mr. Sharabh Shrivastava, Ms. Anushka Aman &

Ms. Taaniya Dograa, Advocates Email: sharabh@iprattorneys.com versus UNION OF INDIA & ANR. .....Respondents Through: Mr. Ankush Mahajan & Mr. Sourabh Verma, Advocates for Mr. Kumar Nikhil Bhaskar in person (M): 9910222350 Email:

ankushm.advocate@gmail.com Ms. Nidhi Raman, CGSC with Mr.

Zubin Singh, Advocate (M): 9958614305 CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA MINI PUSHKARNA, J (ORAL)

1. The present petition has been filed for setting aside the deemed abandonment notice issued by respondent no. 2 in respect of the Indian Patent Application no. 202017037539 under Section 21(1) of the Patents Act, 1970.

2. The basic premise on which the present petition has been filed by the petitioner is that the petitioner is based in Canada and had engaged the First Patent Agent in Canada for filing patent application in India. The First Signature Not Verified Digitally Signed W.P.(C)-IPD 7/2024 Page 1 of 4 Patent Agent appointed another Second Patent Agent in India, to file and prosecute the patent application in India. On account of certain miscommunications, the petitioner missed the deadline, and the reply to the First Examination Report (“FER”) issued by the respondent no. 2, was not filed on time.

3. Learned counsel appearing for the petitioner submits that he does not wish to go into the issue with respect to the negligence on the part of the First or the Second Patent Agent. He submits that the fact remains that the petitioner never received the communication with respect to the FER.

4. Learned counsel appearing for respondent no. 2 submits that as a matter of course, the communications are sent to the Patent Agents. He submits that the communication was sent to the Second Patent Agent in India, who would have forwarded the same, to the First Patent Agent in Canada.

5. Learned counsel appearing for the Second Patent Agent submits that communication was duly received by the Second Patent Agent from the respondent no. 1 and thereafter, communication was sent to the First Patent Agent in Canada.

6. This Court has heard learned counsels for the parties.

7. At the outset, this Court notes the submission made by learned counsel appearing for the petitioner that the petitioner does not wish to press the issue of negligence by either the First Patent Agent or the Second Patent Agent.

8. Considering the aforesaid, without going into the issue as regards the negligence of any of the Patent Agents, the fact remains that the petitioner did not receive the communication with respect to the FER, on account of Signature Not Verified Digitally Signed W.P.(C)-IPD 7/2024 Page 2 of 4 which the petitioner missed the deadline and did not file reply to the same. Consequently, the application of the petitioner was held to be deemed as abandoned by respondent no. 2.

9. This Court notes that in the case of Saurav Chaudhary Versus Union of India & Anr., 2024 SCC OnLine Del 4585, it was held as follows:

“xxx xxx xxx

10. An FER by its very nature is an extremely technical document which requires detailed discussion with the inventor and the client for preparation of a reply. It is incomprehensible as to how a discussion relating to the FER could have been conducted over one incoming call and one outgoing call in 57 seconds. An FER requires proper application of mind and reply to all the objections. Even if the Patent Agent had informed the client of issuance of the FER, there being no email forwarding of the same or informing next steps, leads to an adverse inference against the Patent Agent.

11. In the present case, the objections that have been raised are quite detailed as is evident from a perusal of the FER itself. There are objections as to novelty, inventive step and patentability etc,. Thus, the Patent Agent cannot escape responsibility by