Intellectual Property rights plays an important role in nurturing an economy and these effects become more prominent when they are seen during the times of Globalization.
The hard fact which cannot be denied in this is that IP Laws are mostly territorial in nature with each country prosecuting and maintaining the rights differently. In such cases, the hardships of the applicant(s) is that they find it difficult to maintain different timelines of different jurisdictions. Thus, in order to cope up with this they mostly hire some territorial agent who is well qualified and well versed with the laws of that particular territory and the one who could easily maintain and prosecute their Intellectual Property. But what happens when this particular agent makes a mistake and the application gets abandoned. Should the applicant suffer because of the mistake of his agent?
Hon’ble High Court of Delhi in the matter of The European Union Represented by The European Commission versus Union of India & Ors. W.P.(C) – IPD 5/2022, had an occasion to discuss about the intention of the applicant to abandon his application.
In the instant matter, the petitioner filed two Indian Applications through PCT (Patent Cooperation Treaty). Subsequently, the Indian Patent office issued First Examination Reports for the two applications on 10th April, 2018 and 29th June, 2018.
As per section 21 of the Patents Act, 1970, the time for putting an application for grant within a stipulated period failing which the application will be deemed to have been abandoned. The stipulated period in such a scenario is six months as per Rule 24B sub – rule 5 of the Patent Rules.
Coming back to the facts of the case, despite repeated attempts to contact their Indian agent about the status of their Indian Application and filing of the Response to the First Examination Report, the Indian Agent did not respond back to the applicant. As a result, when the applicants finally contacted another agent (Second agent), they were informed that their applications are Deemed to be abandoned due to non-filing of the response to the First Examination Report.
The second patent agent also tried to address this issue to the Patent office seeking hearing but no response was received. Thus, the applicant had no other option than to approach Delhi High Court for issuance of Writ.
In this matter court restored both the applications on the ground that there was no intention to abandon on part of the applicant as they continuously tried to establish communication with their first patent agent. Furthermore, court noted the fact that the provision of abandoning of patents would demoralize or discourage patentees of India.
DISCLAIMER-
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
AUTHOR:
Kartik Kumar Agarwal
Advocate
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