Mistake of patent agent similar to mistake of advocate: Delhi High Court grants relief to European Union

The Delhi High Court recently granted relief to the European Union (EU) in writ petitions challenging decisions passed by the Controller General of Patents deeming its patent applications abandoned (The European Union Represented by the European Commission v. UOI & Ors). .The judgment passed by Justice Prathiba Singh examined the question of whether writ courts ought to condone delay and restore patent applications when deadlines under the Patent Rules, 2003 have been crossed.The Court found that in the present case, no fault could attributed to the EU, and that applicants should not be made to suffer due to clerical errors and delays on behalf of the patent agent in prosecuting a patent application.It thus held that writ courts can use their jurisdiction in rare cases to allow extension of deadlines, after examining the factual matrix to see whether the applicant in fact intended to abandon the patent..Interestingly, the Court also stated,"In the opinion of this Court, the mistake of the patent agent would be similar to the mistake of an advocate who may be representing parties in any civil or criminal litigation. Insofar as any mistake committed by counsels/advocates are concerned, the settled legal position is that the litigants ought not to suffer...".The EU, represented by the European Commission, had filed two writ petitions seeking the setting aside of orders dated January 21, 2019 and September 30, 2019, passed by the Controller General of Patents. By way of the said orders, two patent applications filed by the EU were treated as "deemed to have been abandoned" under Section 21(1) of the Patents Act, 1970.The petitions were filed on the ground that the delay in filing the reply to the First Examination Report (FER) was not attributable to the EU and despite continuous follow-up, the first patent agent had not responded. .The Court discussed the deadlines prescribed under the Patent Rules, 2003 and clarified that in the prosecution of patent applications, there were two kinds of deadlines - those which can be extended and those which cannot.In the context of the latter, the Court held,"A conjoint reading of the above provisions– Section 21 of the Act read along with Rules 24B, 137 and 138 of the Rules, leaves no doubt in the mind of the court that insofar as the powers of the Controller are concerned, they are circumscribed by the said provisions and the Controller does not have the discretion to extend the timelines prescribed in the provisions, especially those timelines, that are specifically excluded in Rule 138 of the Rules."While the Controller General of Patents may have no power to extend the deadlines, writ courts, in rare cases may do so, after examining whether the applicant in fact intended to abandon the patent or not, the judgment stated..After examining the facts, the Court recognised that the EU had no intention to abandon the application at all."Firstly, after the filing of the patent application in 2012, the request for examination was filed within the time prescribed. Secondly, even when there was a change in the law firm in Europe in 2017 which was coordinating the prosecution of the patent, the Indian patent agent was duly notified of the said fact. The first patent agent had even confirmed the receipt of the said instructions," the Court added in this regard.Additionally, the Court recognised that the EU had made repeated attempts through email to contact the first patent agent and follow up on the status of the applications.It also found that the FER came to be issued only in April 2018 for the first application and in June 2019 for the second. This, the Court noted, was not intimated to the EU or its European law firm.It thus held that the EU had not been negligent and had in fact taken all steps within its command to follow up on the prosecution of the patent application, despite which the consequence of abandonment had been saddled upon it.On these grounds, the Court directed that the EU's response to the FER be taken on record by the patent office, and restored the two patent applications to their original position. The applications will now be decided upon as per the Patent Act and Rules within a period of six months..In its judgment, the Court cautioned that the intent of the legislature in framing Rule 138 of the Patent Rules, 2003 could not be ignored by the Controller, nor could the express language of Section 21(1) of the Act, which mandates for deemed abandonment in case of non-compliance with the requirements under the Act."It is only in extraordinary cases, while exercising writ jurisdiction, that the Court may consider being flexible, and this would depend on the facts of each case as to whether a condonation ought to be given at all," the Court said in this regard.Before parting, it also made note of the comments of a Parliamentary Standing Committee on Commerce, which highlighted the enormous prejudice being caused to patent applicants due to `deemed abandonment’ provisions. "The Committee has opined that the abandoning of patents would de-moralize or discourage patentees in India," the Court noted, while highlighting that the Committee had recommended that flexibility should be incorporated in the Act to make for allowance of minor errors and lapses to prevent outright rejection of patents being filed..The European Union was represented by PM Law Associates and Remfry & Sagar, with Advocates Peeyoosh Kalra, Vineet Rohilla, Rohit Rangi, Sudhindra Tripathi, Rohan Kapoor, Garvil Singh, Debashish Banerjee and Ankush Verma appearing.Meanwhile Central Government Standing Counsel Harish V Shankar along with Advocates S Bushra Kazim, Srish Kumar Mishra and Sagar Mehlawat represented the Central government..[Read full order]