Procedural Lapses by Agent Cannot Bar Patent: Madras HC

In a significant ruling concerning intellectual property rights, the Madras High Court has held that a patent applicant should not be deprived of their valuable statutory rights due to an inadvertent error committed by their professional consultant. Justice N. Anand Venkatesh of the Madras High Court directed the Controller General of Patents to accept a belated request for examination regarding a US citizen’s patent application, emphasizing that procedural lapses by an agent should not be equated with an intentional abandonment of rights.

Case Background: The Missed Deadline

The petitioner, Edward Charles Troppi Smythe, a US citizen, filed an Indian patent application for an invention concerning the "Prediction, Visualisation and Remediation of Satellite Conjunctions." Due to a calculation error by the Indian Patent Agent engaged to prosecute the application, the deadline for filing the Request for Examination (Form 18) was misidentified.

While the statutory deadline—calculated as 31 months from the date of the first priority application (September 10, 2021)—expired on April 10, 2024, the Indian Patent Agent erroneously advised the petitioner that the deadline was April 8, 2025. Upon attempting to file the request in December 2024, the portal rejected the submission as invalid. The respondent subsequently refused the request, citing the expiration of the statutory period and the deemed abandonment of the application.

Arguments and Legal Conflict

Counsel for the petitioner argued that the delay was purely a consequence of professional negligence by the Indian Agent, noting that there was no intent to abandon the application. The petitioner relied on the precedent set in Chandra Sekar vs. Controller of Patent and Designs , emphasizing that an applicant should not suffer for their agent's mistake when there is no proof of an intent to abandon.

The respondent, representing the Controller of Patents, maintained that the law explicitly requires a request for examination to be made within the prescribed period under Section 11B of the Patents Act and Rule 24B of the Patent Rules, 2003. According to the respondent, failure to adhere to this timeline leads to a deemed withdrawal of the application, leaving no discretion for the authorities to condone the delay.

Key Observations: The Court’s Reasoning

The High Court focused on the lack of intent to abandon the patent. In his order, Justice N. Anand Venkatesh highlighted that the petitioner had actively pursued the application throughout the process.

> "Valuable statutory rights of the petitioner cannot be completely deprived of merely because the patent application for examination has not been diligently presented by the agent. The petitioner... is dependent on the Indian agent appointed by his attorney in US, the said situation cannot be ignored all together."

The Court further clarified its stance by citing the judicial trend concerning patent proceduralism:

> "Unless and otherwise the petitioner intended to abandon his right to pursue the application for examination, such applicant cannot be completely deprived of such a right which was lost due to a mistake on the part of the Indian Agent."

Final Decision and Implications

The High Court allowed the writ petition, directing the respondent to accept the request for examination in Form 18 for Patent Application No. IN202447028876. By holding that procedural errors by agents do not constitute an intent to abandon, the Court has provided a significant safeguard for international patent applicants who rely on domestic agents to navigate the complexities of the Indian Patent Office’s timelines.

This judgment serves as a reminder that courts prioritize substantial justice over hyper-technical procedural defaults, provided the applicant remains diligent and lacks any clear evidence of abandonment. The ruling is expected to influence future cases where applicants seek parity in instances of professional error.