Delhi High Court: In a petition filed by the petitioner to challenge the abandonment of its patent application titled ‘Blind-Stitch Sewing Machine and Method of Blind Stitching’ and to restore the said application, a Single Judge Bench of Pratibha M. Singh, J. held that this was a clear case of misconduct and intentional negligence by the patent agent and directed the formation of a Code of Conduct for trade mark and patent agents.
Background
The petitioner contended that he filed a patent application through a firm in Delhi that provided registration services for trademarks, patents, copyrights, and designs. This application was filed on 03-08-2019 and a request for examination was filed on 21-02-2022.
The First Examination Report (‘FER’) for the subject application was issued on 29-04-2022 with a direction by the Patent Office that the response should be filed within six months. The petitioner repeatedly followed up with the firm but did not receive any reply. During the process, the petitioner found 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 and filed a request to restore the patent application on 28-01-2023. Thus, the present petition came into existence.
Analysis and Decision
The Court noted that the firm had not shown diligence in communicating the issuance of the FER to the petitioner after the filing of the request for examination. The Court stated that there was not even a shred of evidence on record to show that any communication had taken place between the agent and the petitioner after the issuance of the FER.
The Court stated that repeated emails of the petitioner had gone un-replied and no reason for the same was given by the agent despite repeated queries and their only submission was that there were two telephonic conversations.
The Court noted that the objections that had been raised were quite detailed since there were objections as to novelty, inventive step, patentability, etc. Thus, the Court stated that the agent could not escape responsibility by simply stating that he had discussed the same in a telephonic conversation with the petitioner.
The Court stated that patent agents are the only persons who can prosecute patents before the patent office and have an enormous responsibility on their shoulders to ensure that valuable innovations are properly protected as per the procedures prescribed in law.
Further, the Court stated that the availability of access to the IP office website could not be a ground that could be taken since most inventors and clients may not have the resources to access the IP office website and the technical expertise to understand the same, and it is for this reason that agents are engaged by the inventors and applicants.
The Court stated that the mere fact that the FER would be uploaded on the website may not be sufficient to hold that the petitioner had notice of the FER. The Court noted that the petitioner had taken steps to try and apply for the revival of the patent application at the earliest possible time i.e., between December 2022 and January 2023.
Thereafter, the Court referred to European Union v. Union of India 2022 SCC OnLine Del 1793 wherein it was stated that any mistake committed on behalf of the agents should be treated in a similar manner as that of the counsels/advocates.
The Court referred to various cases and stated that the present case would fall within the ambit of ‘extraordinary circumstances’ wherein the petitioner did his part and had duly followed up with the agent regarding the status of the application. Therefore, the Court stated that in such cases, the Court, while exercising writ jurisdiction, ought to be a little flexible while deciding whether condonation be given or not.
The Court held that the revival request dated 28-01-2023 ought to be entertained by the patent office within the extended period of three months. Accordingly, the Court set aside the abandonment order and directed that the same be reflected on the website by the Office of CGPDTM within two weeks.
Further, the patent office was directed to accept the physical or online reply to the FER which shall be filed within four weeks after the update on the abandonment order is reflected on the website, and to then proceed with the patent application of the petitioner as per law.
Further, the Court stated that there was a lack of diligence by patent agents at various stages of the application that resulted in valuable patent applications being abandoned or lapsed. It was stated that such a lack of diligence may trigger the mandatory provisions of the Patents Act, 1970 (‘Act’) which would result in the abandonment of the application itself.
The Court also discussed the important function and role of patent agents and the legal provisions that have been included in the Act. After perusing the provisions, the Court noted that the Act does not define what constitutes misconduct for patent agents in a professional capacity. However, examining the present purpose, the Court noted that the name of an agent could be removed if the agent was guilty of misconduct in his professional capacity.
The Court referred to Rule 114 of the Patent Rules, 2003, and found it relevant to note that the Controller is empowered under the Act as well as the Rules to remove the name of the agent if it is found that he is guilty of professional misconduct.
The Court stated that there were no Rules of Conduct for patent agents and a proper framework was required for dealing with professional misconduct by patent agents. The Court said that to understand what constitutes professional misconduct, guidance could be taken from the framework that exists for other professionals such as Advocates, Chartered Accountants, etc.
The Court, after a perusal of an affidavit filed by the Assistant Controller of Patent and Designs, stated that there was no specific framework provided for the manner in which complaints could be entertained and the timelines within which action can be taken if required.
Further, it was stated that there was an imminent need for a proper system or framework to be established for regulating the conduct of patent agents and that the Code of Conduct has to be prescribed separately for all four different levels of duties owed by them. The Court stated that apart from this there was also an urgent need to provide a mechanism for lodging a complaint against a trade mark/patent agent, for prescribing factors that would constitute misconduct, for setting out how the complaint is to be dealt with, and for prescribing penalties that could be imposed.
The Court further stated that while patent agents and trade mark agents may be entitled to declare the kind of services they offer, recent trends had shown misleading promotion on the part of companies and entities including IP professionals was taking place. The Court also noted that various websites for applying and prosecuting trademarks which were making representations that could be misleading and misrepresentative, were operational.
The Court stated that while it may not be illegal for the agents to have a website giving contact details and other material relating to their services, the advertising done by them has a larger bearing on clients and applicants who may be availing the services, and the Controller General ought to be able to curb such misleading and misrepresentative advertising in the larger interest of the profession and the applicants.
Further, the Court asserted that whenever there is any offering of service for trade mark or patent registration, it should be compulsory for the name of the agent and his registration number to be mentioned so that the promotional content can be linked back to whoever is responsible, and that without such safeguards, there is no accountability present.
The Court directed that the office of CGPDTM shall look into all issues raised and after proper consultation, shall put a proper mechanism in place for the conduct of the agents. Moreover, the Court stated that guidelines for advertising were also required.
The Court held that in the present matter, the patent agent was not diligent and kept silent all along and directed the office of CGPDTM to hold an inquiry against the agent and take action as per the law which shall be concluded within four months.
The Court directed the CGPDTM to prepare and put up a draft Code of Conduct on its website within two months for stakeholder consultation and notify the same within six months, latest by 31-12-2024.
The Court, while disposing of the petition, also directed for a framework for dealing with complaints against the agents to be put in place within the said period, and any complaint filed until then shall be decided by an ad-hoc Committee of at least two officials from the trade mark/patent office and one senior IP practitioner with at least 15 years of practice, registered as a trade mark/patent agent.
[Saurav Chaudhary v. Union of India, 2024 SCC OnLine Del 4585, Decided on 04-07-2024]
Advocates who appeared in this case:
For Petitioner — Advocate Neeraj Grover, Advocate Meenakshi Ogra, Advocate Tarun Khanna, Advocate Samrat S. Kang, Advocate Rishi Vohra, Advocate Hemant Kataria, Advocate Chhavi Pandey, Advocate Amarjeet Kumar
For Respondent — CGSC Nidhi Raman, Advocate Zubin Singh, Advocate Naveen Chaklan, Sr. Advocate Chander M Lall, Advocate Nancy Roy, Advocate Archana Sachdeva, Advocate Sushant M. Singh, Advocate Kruttika Vijay, Advocate Raghav Malik, Advocate Ananya Chug, Advocate Sushant Singh