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2024 Supreme(Online)(DEL) 372
HIGH COURT OF DELHI
Prathiba M. Singh, J
SAURAV CHAUDHARY – Appellant
Versus
UNION OF INDIA & ANR. – Respondent
W.P.(C)-IPD-9/2023
Mr Neeraj Grover, Ms. Meenakshi Ogra, Mr Tarun Khurana, Mr Samrat S. Kang, Mr. Rishi Vohra, Mr. Hemant Kataria, Ms. Chhavi Pandey, Mr. Amarjeet Kumar, Ms. Nidhi Raman, Mr. Zubin Singh, Mr. Naveen Chaklan, Mr. Chander M Lall, Ms. Nancy Roy, Ms. Archana Sachdeva, Mr. Sushant M. Singh, Ms. Kruttika Vijay, Mr. Raghav Malik, Ms. Ananya Chug, Mr. Sushant Singh
Patent Agents must maintain diligence and communication with clients; negligence leading to abandonment of a patent application constitutes professional misconduct.
Headnote:(A) Patents Act, 1970 - Section 21(1) - Writ petition challenging abandonment of patent application - The court set aside the abandonment order, allowing the petitioner to file a response to the First Examination Report (FER) within a specified period, emphasizing the negligence of the Patent Agent in failing to communicate critical information to the petitioner. (Paras 18, 68)
(B) Professional Misconduct - The court highlighted the responsibility of Patent Agents to maintain diligence and communication with clients, noting that negligence leading to abandonment of a patent application constitutes professional misconduct. (Paras 19, 68)
(C) Judicial Precedent - The court referred to previous judgments indicating that mistakes by Patent Agents should not penalize applicants, reinforcing the principle of liberal interpretation in extraordinary circumstances. (Paras 13, 68)
Facts of the case:
The petitioner filed a patent application for a sewing machine, which was deemed abandoned due to the Patent Agent's failure to respond to the FER despite repeated follow-ups by the petitioner. The petitioner engaged a new agent and sought restoration of the application.
Findings of Court:
The court found that the Patent Agent's negligence led to the abandonment and directed the CGPDTM to accept the revival request and conduct an inquiry into the agent's conduct.
Issues: The main issues included whether the abandonment was justified and the responsibility of the Patent Agent in communicating with the petitioner.
Ratio Decidendi: The court ruled that the Patent Agent's failure to inform the petitioner about the FER constituted professional misconduct, and the abandonment order was set aside due to the petitioner's diligence in following up.
Result: The abandonment order was set aside, and the petitioner was allowed to file a response to the FER.
Prathiba M. Singh, J. 1.This hearing has been done through hybrid mode. BACKGROUND FACTS:
2.The present writ petition has been filed by the Petitioner challenging the abandonment of its patent application number 201911031496 titled “Blind-Stitch Sewing Machine and Method of Blind Stitching”. The prayer in the writ petition is to restore the patent application of the Petitioner. The details of the said application are set out below:
3.The case of the Petitioner is that he had filed a patent application through one firm “M/s Delhi Intellectual Property LLP” (hereinafter referred as the ‘firm’) having office at 4-K, 4th Floor, Gopala Tower, 25, Rajendra Place New Delhi-110008. Mr. Naveen Chaklan, Partner at the said firm was dealing with the Petitioner’s patent application. In addition to Mr. Chaklan, two more lawyers are stated to be working in the said firm. The firm provides registration services for trademarks, patents, copyrights and designs.
4.According to the Petitioner, the application was filed on 3rd August, 2019 and a request for examination was filed on 21st February, 2022.
Thereafter, the FER in respect of the subject application was issued on 29th April, 2022 with a direction by the Patent Office that the response should be filed within a period of six months.
5.It is the case of the Petitioner that repeated follow ups were made by him with the firm and Mr. Chaklan on various dates i.e., 15th March, 2022, 28th August, 2022, 5th November, 2022, 19th November, 2022, 14th December, 2022, 22nd December, 2022 and 8th January, 2023. However, he did not receive any reply from the Patent Agent. During the process, the Petitioner found out that the application was “deemed to be abandoned” due to non-filing of the response to the FER. The Petitioner then engaged a new Patent Agent. Finally, the Petitioner filed a request for restoring the patent application on 28th January, 2023. Hence, the present writ petition. On 31st July, 2023, notice was issued to the Patent Agent by this Court. Mr. Chaklan has appeared and made submissions.
ARGUMENTS:
6.Notice was issued in this matter on 15th February, 2023, and submissions have been heard. The same are captured below:
- i.Mr. Grover, ld. Counsel appearing for the Petitioner relies upon the decision of this Court in European Union Represented by the European Commission v. Union of India and Ors. 2022:DHC:2301 to argue that in exceptional circumstances High Court can exercise power under Article 226 to condone delay.
- ii.It is his submission that in the present case, there are exceptional circumstances wherein despite follow ups, the Patent Agent did not respond and thus the Petitioner ought to be given benefit of the said decision.
- iii.Mr. Grover submits that repeated emails by the Petitioner from 19th February, 2022, 15th March, 2022, 28th August, 2022, 5th November, 2022, 19th November, 2022 and 14th December, 2022 have gone un- replied.
- iv.On 22nd September, 2022, the Petitioner came to know that the status on the website is now being shown as “reply not filed deemed to be abandoned” and the query was raised with the Patent Agent, however, there was no reply. The Petitioner then wrote on 8th January, 2023 to another partner in the firm Delhi IP, however, received no reply.
- Thus, it is submitted that the Petitioner cannot be blamed for the abandonment.
- v.Finally, Mr. Grover, submits that the six months period for replying to the examination report ended on 28th October, 2022. The Petitioner had the option of making an application for the three months extension prior to the expiry of the said six months period, however, after continuously following up finally a revival request form was filed on 28th January, 2023 by the Petitioner. Since on the website there was no option for the Petitioner to file the reply to the FER the same could not be filed.Hence, the Petitioner has availed of the remedy of filing the present writ petition.
7.It is submitted by Mr. Naveen Chaklan-the Patent Agent as un
