Patent applicants should not be penalized for errors committed by their legal representatives
Facts of the Case
Ciena Corporation filed a patent application in India for “Modular Network Element Architecture,” based on its earlier US patent applications. The application entered the national phase in India on August 11, 2020. A request for examination was made on April 15, 2022, and the First Examination Report (FER) was issued on September 1, 2022. Due to the patent agent’s failure to communicate the FER to Ciena Corporation, no response was filed within the statutory period. Consequently, on February 16, 2024, the Indian Patent Office issued a letter deeming the application abandoned under Section 21(1) of the Patents Act, 1970. The petitioner only became aware of this abandonment on January 23, 2025, and subsequently filed a writ petition.
Procedural Background
Ciena Corporation filed a writ petition in the Delhi High Court, challenging the abandonment order and seeking restoration of its patent application. The petitioner contended that the abandonment was due to an inadvertent mistake of its patent agent and relied on precedent where courts have granted relief in similar cases. The respondent (Union of India) opposed the petition, arguing that there was significant delay in filing the writ petition and that statutory timelines must be adhered to.
Reasoning of the Court
The Court noted that it is a settled legal principle that a litigant should not suffer due to the mistake of its legal representative, in this case, the patent agent. Citing the European Union Represented by the European Commission v. Union of India & Ors. (2022 SCC OnLine Del 1793), the Court emphasized that if the applicant had no intention to abandon the application and was actively pursuing it, then the application should not be penalized for an agent’s error. The Court observed that Ciena Corporation had filed and successfully prosecuted the same patent in multiple other jurisdictions, indicating no intention of abandoning the Indian application. The Court considered the affidavit of the patent agent, who admitted his mistake, and held that the petitioner was diligent in its actions after discovering the abandonment.
Decision
The Court set aside the abandonment letter dated February 16, 2024. The patent application was restored to its original status. The petitioner was granted a final opportunity to file a response to the FER within four weeks. A copy of the order was directed to be sent to the Controller General of Patents, Designs, and Trademarks for compliance.