Recently, in Saurav Chaudhary vs Union of India & Anr. [2024:DHC:4946], the Delhi High Court exercised its writ jurisdiction to permit the revival of the Petitioner’s patent application which was deemed abandoned by the Patent Office under Section 21(1) of the Patents Act, 1970, for failure to file a response to the First Examination Report (FER) within the prescribed time limit. The Court allowed for the restoration of the subject application noting the patent agent’s negligence and misconduct in failing to file a timely reply to the FER, and the diligence of the petitioner in continuously following up about the status of their application with the patent agent.

Notably, the patent agent in charge of the matter failed to inform the Petitioner about the issuance of the FER and the deadline for responding to the same. This happened despite regular e-mail follow-up with the patent agent, by the Petitioner, in relation to the status of their application. In fact, the Petitioner learnt about the abandonment of their case through non-filing a reply to the FER on their own upon a perusal of the patent office’s website for the status of their case. Thereafter, they immediately transferred the matter to another agent and tried to restore the application by filing a request for extension of time which, however, could not be done as the Patent Office’s website does not permit filing of a request for extension of time for filing the reply to the FER after the expiry of the due date for filing such reply.

The patent agent when questioned regarding his conduct in the matter by the Court, was unable to explain the lack of any written communication in relation to the issuance of the FER or the lack of any response to the repeated and regular follow-up by the Petitioner. He informed the Court that he had communicated the fact of issuance of the FER to the applicant through two telephonic conversations.

The Court highlighted that patent prosecution is an extremely technical matter which requires detailed discussions with the inventor and the client and, thus, an agent cannot evade their professional responsibility by merely informing the client about the issuance of the examination report over a short telephonic call.  The Court also pointed out that the availability of the examination report on the official website of the patent office is not sufficient to allege that an applicant had notice of the examination report as inventors and applicants may not have the knowledge and understanding to access the IP office’s website and it is one of the reasons why patent agents are appointed by inventors and applicants. The Court observed that the applicant’s intention to pursue their application can be determined by their continuous follow-up with their patent agent and, thus, so long as there is no contributory negligence on the part of the applicant, the applicant ought not to suffer for the negligence, inaction, deliberate omission or misdemeanour of their patent agent.

Thus, the Court directed for the Petitioner’s application to be restored. In view of the intentional negligence by the Petitioner’s erstwhile patent agent, the Court also directed the office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) to hold an enquiry against the patent agent and to take action in accordance with law.

Further in its decision, the Court highlighted the critical role that patent agents play in assisting applicants to obtain patent protection and underscored that they are the only personnel entrusted by law to file patent applications and prosecute the same. Therefore, their role is critical and any professional misconduct on behalf of the agent is a serious issue. The Court noted the different levels of duties that patent agents owe, including:

• duties towards their clients/applicants of patents  
• duties towards the IP office;
• duty to society in general; and
• duty to Courts, if and when they appear and exercise the right of audience.

Considering the expanse of the duties of patent agents and the impact an agent’s professional negligence and misconduct can have on an applicant, the Court emphasised the need for a proper framework to regulate the conduct of patent agents at all four levels of duty and the need to define the actions and inactions that could constitute misconduct in this context.

The Court noted that there is presently no framework defined for dealing with misconduct by patent agents and while the Patents Act and Rules empower the Controller to disqualify a patent agent for professional misconduct, they do not explicitly define misconduct and negligence. The Court undertook the exercise of analyzing the existing framework for similar professionals in India viz advocates and charted accountants, and for patent and trade mark agents in various jurisdictions viz United Sates of America, United Kingdom and Ireland, to underline the significance accorded to the conduct of agents and similar professionals and the detailed provisions that exist to regulate their conduct. The Court remarked that “the Bar Council of India Rules prescribe in detail the manner in which Advocates conduct themselves and if any person has a complaint against the Advocates conduct, such a complaint can be lodged with the State Bar Council and the same would be proceeded with, in accordance with the provisions of the Act. Similar punishments ought to be introduced with respect to the trademark/patent agent”.

The Court added that there is an urgent need for the CGPDTM to:

• prepare and notify a proper Code of Conduct for trade mark/ patent agents;
• provide a mechanism for lodging of a complaint against a trade mark/ patent agents;
• prescribe factors that would constitute misconduct;
• set out the manner in which the complaint is to be dealt with;
• prescribe penalties that can be imposed.

After a detailed analysis, the Court concluded that misconduct by patent agents “could include the commission or omission of an act that constitutes a breach of ethical or professional obligations –

• wherein such behaviour, whether intentional or negligent, contravenes established standards of practice.
• if the same causes harm to clients, diminishes their trust, compromises the Patent Agent’s integrity including failure to uphold the principles of honesty, morality, accountability, and professionalism.”

Noting the rise in misleading advertising by individuals and firms offering trade mark and patent registration services, the Court also emphasised on the urgent necessity to regulate such misleading and misrepresentative advertising by trade mark and patent agents in order to safeguard the integrity of the profession and protect the interests of applicants. The Court further stated that whenever there is any advertisement offering services for trade mark or patent registration, the promotional material should mandatorily disclose the name of the registered agent and their registration number. This safeguard, the Court opined, will establish accountability and ensure traceability of the individual responsible for such advertising thereby ensuring that the rights of genuine applicants are not jeopardised.

The Court directed the CGPDTM to look into the foregoing issues and conduct a stakeholder consultation to put in place a proper mechanism to regulate the conduct of trade marks and patent agents and a framework for filing complaints.

The draft of the Code of Conduct has been directed by the Court to be published on the CGPDTM’s official website within two months from July 4, 2024, for stakeholder consultation and the finalized Code of Conduct is scheduled to be formally notified by December 31, 2024. The Court has further directed that in the interim period, if there is any complaint filed against any trade mark or patent agent before the office of the CGPDTM, the same shall be considered and decided by an ad-hoc committee consisting of at least two officials from the trade mark/patents office and one senior IP practitioner with at least 15 years of practice as also registered as a patent/trade mark agent. The ad-hoc committee is scheduled be notified within two months from July 4, 2024.