The Orissa High Court in M/s. Green Energy Resources, Sambalpur vs Union of India & Ors. [W.P.(C) No. 19128 of 2024] considered whether a patentee can be permitted to seek restoration of a lapsed patent after expiry of the statutory restoration period, where the lapse occurred due to the negligence of a patent agent and during the COVID-19 pandemic.

Under the Patents Act, 1970, a granted patent remains in force only if annual renewal fees are paid. Where such fees are not paid within the prescribed time, the patent ceases to have effect. Section 60(1) provides a limited statutory remedy where a patent has ceased to have effect due to non-payment of renewal fees. The patentee or legal representative may apply for restoration within eighteen months from the date on which the patent ceased to have effect. Further, under Section 60(3), such an application must fully disclose the circumstances that led to the failure to pay renewal fees, and the Controller may require additional evidence before deciding the request for restoration.

In the instant case, the Petitioner had been granted patent number 343974, entitled “a Novel Method For Detoxification Of Spent Potlining (SPL) By Controlled Head Treatment”. The patent remained in force until September 22, 2021, after which it lapsed due to non-payment of renewal fees.

According to the Petitioner:

• The renewal fees were not paid due to negligence of the authorised patent agent, whom the Petitioner had relied upon.
• The Petitioner remained under the impression that the patent was being maintained.
• The lapse came to light only in June 2024, well after the expiry of the statutory restoration period.
• The relevant period overlapped with the COVID-19 pandemic, making verification difficult.
• The Patent Office portal no longer permitted filing of a restoration application after expiry of 18 months, leaving the Petitioner with no administrative remedy.

The central issue before the Court was therefore whether the Petitioner could be permitted to apply for restoration at such a belated stage.

The Court relied heavily on Delhi High Court precedents recognising that mistakes of patent agents should not ordinarily deprive patentees of substantive rights, particularly where there is no intention to abandon the patent.

Referring to decisions such as Bry-Air Prokon Sagi vs Union of India and European Union v Union of India, the Court noted that:

• Lapse of patent rights has serious consequences.
• Courts have adopted a liberal approach where the patentee was diligent but the patent agent was negligent.
• Courts exercising writ jurisdiction may intervene in exceptional cases to preserve statutory rights.

The Court also considered the COVID-19 limitation extensions ordered by the Supreme Court, which overlapped with the relevant period.

On facts, the Court accepted:

• The explanation of patent agent negligence.
• The absence of intention to abandon the patent.
• The impact of the pandemic period.

In view of the foregoing, the Court allowed the writ petition and permitted the Petitioner to file a restoration application.