In the case of Ciena Corporation vs Union of India & Ors. [W.P.(C)-IPD 15/2025 & CM 49-51/2025], the Delhi High Court exercised its writ jurisdiction to restore the Petitioner’s PCT national phase application which was deemed abandoned by the Controller under Section 21(1) of the Patents Act, 1970. The Court directed the restoration of the application noting that an “applicant cannot be made to suffer on account of bona fide mistake committed by its patent agent”.

The Controller had deemed the subject application abandoned citing the Petitioner’s failure to file a response to the First Examination Report (FER) within the prescribed time frame.

The Petitioner contended before the Court that the patent agent responsible for handling the Petitioner’s portfolio had failed to inform the Petitioner about the issuance of the FER. The Petitioner became aware of the abandonment of the application only after conducting due diligence through a third party. Upon learning about the abandonment, the Petitioner immediately contacted the patent agent to inquire about the application. According to the affidavit of the patent agent, the FER had been inadvertently omitted from the docketing system of the agent’s firm, which led to the failure to communicate it to the Petitioner.

In its judgment, the Court emphasised the established legal principle that an applicant who has exercised due diligence ought not to be made to suffer for the mistake made by their lawyer or patent agent. The Court relied on the following factors in determining that the Petitioner had no intention of abandoning the subject application:

• The Petitioner had filed multiple corresponding applications globally through the PCT route within the prescribed time frame.
• The Petitioner had successfully obtained patent grants for its corresponding applications in various other jurisdictions.
• The request for examination of the subject application had been filed on time.
• The Petitioner filed the instant petition immediately upon learning of the abandonment letter.

In view of the foregoing, the Court set aside the abandonment letter issued by the Controller under Section 21(1) and directed the restoration of the application.