Implications of Patent Agent Communication Failures in India

In W.P.(C)-IPD 7/2024-Waterotor Energy Technologies Inc. vs. Union of India and Anr. the Petitioner based in Canada had hired a first agent in Canada to file his patent application in India. First agent in Canada had hired a second agent in India to carry forward the application process in India. Petitioner’s application was considered abandoned by the Controller under section 21(2) of the Patents Act 1970 due to missing the deadline of filing a reply of First Examination Report of the Patent. However, the Petitioner contended that he did not receive the communication whereas second agent contended that the communication was duly received by the second patent agent and thereafter, the communication was sent to the first patent agent in Canada. However, the Petitioner denied receiving the information with regard to First Examination Report and did not press charges on the grounds of negligence of first or second patent agent.

Then Hon’ble Delhi High Court relied on Saurav Chaudhary Versus Union of India & Anr., 2024 SCC OnLine Del 4585

….wherein it explained the technicalities involved in drafting the reply of First Examination Report which requires application of mind. Mere informing the client (Petitioner) over call in 57 seconds about FER does not absolve the Patent agent from the responsibility of getting into the detailed discussions since Patent Agents are now the only persons who can prosecute patents before the patent office. Henceforth, the revival request of the Petitioner was allowed and the abandonment order was set aside.

Relying on abovementioned judgement the abandonment order dated 16th February, 2024 of the controller was set-aside and the patent application of the petitioner was revived. Moreover, directions were issued to the controller to show the status of the application of the petitioner as revived and pending on its web portal. Petitioner was granted time to file its reply to the FER. The court also clarified that the order was being passed in the extraordinary circumstances of the case since the Second Patent Agent was situated in India, while the First Patent Agent was in Canada and on account of which, the circumstance of missed communication, were not excluded.