Regulating The Conduct of Patent Agents in Light of Instances of Negligence
In the intricate realm of intellectual property, Patent Agents play a crucial role in managing and safeguarding patent applications. Lapses in their duties or instances of professional misconduct can significantly disrupt this process, with serious repercussions for applicants. The recent judgment of the Hon’ble Delhi High Court in Saurav Chaudhary v. Union of India[1] vividly illustrates such a case of negligence. This case highlights the pressing need for more rigorous regulation and oversight of Patent Agents' professional conduct.
Facts of the case:
The Petitioner challenged the abandonment of his patent application number 201911031496 seeking its restoration. The chronology of events is as follows:
The application was filed on August 3, 2019, through a firm with the firm’s partner and Patent Agent, handling the case.
A request for examination was filed on February 21, 2022, and the First Examination Report (hereinafter, ‘Office Action’) was issued on April 29, 2022, requiring a response within six months.
The Petitioner, thereafter, made numerous follow-ups with the firm and the Patent Agent between March 2022 and January 2023 but received no response.
The application was deemed abandoned due to non-filing of the reply to Office Action. The Petitioner engaged a new Patent Agent and filed a request for restoration on January 28, 2023, leading to the present writ petition.
On July 31, 2023, the Court issued a notice to the Patent Agent who appeared and made submissions.
Submissions on behalf of the Petitioner:
On September 22, 2022, the Petitioner found the status shown as “reply not filed deemed to be abandoned” and received no response after raising the issue with the Patent Agent and another partner of the firm. Hence, the Petitioner pleaded that they should not be blamed for the abandonment. Although the six-month deadline to respond expired on October 28, 2022, and a three-month extension could have been requested, the Petitioner could not file a reply due to continuous follow-ups and the absence of an option to file a reply on the website. Consequently, placing reliance on European Union Represented by the European Commission v. Union of India and Ors[2], where the Court held that relief for delays can be granted in exceptional cases under Article 226, the Petitioner filed a revival request on January 28, 2023, seeking relief through a writ petition.
Submissions on behalf of the Patent Agent:
The Patent Agent argued that he maintained communication with the Petitioner until the patent application was filed and confirmed filing of the request for examination. The Office Action was issued on April 29, 2022, but the only subsequent communications from the Patent Agent were a brief incoming call and an outgoing call on September 10, 2022. The Patent Agent claimed that he did not receive instructions from the Petitioner to respond to the Office Action, though he did inform them of its issuance. When inquired by the Court, he admitted there was no written or emailed notification of the Office Action. Additionally, the Patent Agent claimed that the Petitioner did not give him a Power of Attorney. The Petitioner countered this by presenting evidence of having paid the examination fee by February 2022. However, the Office of the Controller General supported the Patent Agent’s case.
Court’s Analysis:
The Court acknowledged that Office Actions include technical documents requiring detailed discussion, which could not have been adequately handled through brief phone calls. The Court also noted that access to the IP office website does not suffice for proper notification to the Petitioner, who relied on the Patent Agent, for such information. The Court, therefore, concluded that the Patent Agent's failure to properly communicate the issuance of the Office Action and the subsequent failure to keep the Petitioner informed as to the developments in the status of application led to the abandonment.
The Court referred to precedents as seen in cases such as Smt. Lachi Tewari v. Director of Land Records[3], Rafiq v. Munshilal[4], Mangi Lal v. State of M.P.[5], The Secretary, Department of Horticulture, Chandigarh v. Raghu Raj[6], Bry-Air Prokon Sagl v. Union of India[7], and Chandra Sekar v. The Controller of Patents and Designs[8], emphasizing that negligence by a patent agent should not unfairly disadvantage the applicant.
Role of Patent Agents and Governing Regulations:
Reflecting upon the extent of responsibilities that the Patent Agents have, including duties to clients/applicants of patents, IP office, Courts and the society at large, any negligence or misconduct on their part should be addressed seriously. This negligence often results in valuable patents being abandoned or lapsing at various stages, such as:
Failure to file a request for examination on time.
Not notifying client/applicant of the issuance of the Office Action.
Not filing a response to the Office Action or following up.
Non-communication of hearing notice(s) issued by the Controller.
Not submitting written responses post-hearing.
Failing to communicate or respond to pre/post-grant oppositions.
Failure to communicate or respond to revocation notices.
Missing deadlines for corresponding patent information and working statement(s) on Form 27.
Failure to pay renewal fee of the patent.
In case a Patent Agent is found guilty of professional misconduct, the Controller has the authority under both the Indian Patents Act, 1970 (hereinafter, ‘the Act’) and the Indian Patents Rules (hereinafter, ‘the Rules’) to remove the name of the agent. However, Section 131 of the Act describes situations wherein the Controller has power to refuse to deal with certain agents. Hence, currently, there are no specific rules defining professional conduct for Patent Agents, necessitating the development of a clear framework to address such misconduct.
In order to understand what constitutes professional misconduct, the court took inspiration from other professions, such as Advocacy. For instance, under the Indian Advocates Act, misconduct by an advocate can lead to reprimand, suspension, or removal from practice, with disciplinary powers held by the State Bar Council. Similarly, while the Rules mention grounds for disqualification of Patent Agents, they lack a detailed definition of "misconduct" and "negligence". The need for a broader and clearer definition was, therefore, felt by the Court.
Decision of the Court and Conclusion:
Taking stock of the prevailing situation, the Court revoked the abandonment order and directed the Patent Office to accept a physical/online reply to the Office Action from the Petitioner and proceed with the patent application according to the law. Additionally, the Patent Agent’s failure to notify the client/ Petitioner about the Office Action despite repeated emails amounts to professional misconduct and intentional negligence. The court noted that this omission led to the patent application being deemed abandoned, which the Petitioner did not intend. The Controller General’s office was instructed to investigate the Patent Agent’s conduct and take appropriate action, the Patent Agent to be notified to explain their actions and given a personal hearing.
Regulating the Conduct of Patent Agents:
The Controller General’s Office will draft and post a Code of Conduct for Patent Agents on its website within two months for stakeholder feedback. The court set the deadline of December 31, 2024, for the Code for its finalization and notification.
During this period, a framework for handling complaints against Patent Agents will be established. Any current complaints will be reviewed by an ad-hoc Committee, to be set up within two months, consisting of two officials from the patent/trademark office and at least one experienced IP practitioner or Patent Agent.
The Court's analysis in the present case not only tackles the issue germane to the facts of the present case but also paves the way for broader reforms aimed at protecting patent applicants and reinforcing the credibility of the patent system, wherein Patent Agents play a central role.
References:
[1] W.P.(C)-IPD 9/2023
[2] W.P.(C)-IPD 5/2022
[3] 1984 Supp SCC 431
[4] (1981) 2 SCC 788
[5] (1994) 4 SCC 564
[6] (2008) 13 SCC 395
[7] 2022/DHC/4439
[8] W.P. Nos. 12620& 12621 of 2021
Comments