W.P.(C)-IPD 9/2023 Page 1 of 60

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Reserved: 9

th

April, 2024

Date of Decision: 04

th

July, 2024

+ W.P.(C)-IPD 9/2023

SAURAV CHAUDHARY ..... Petitioner

versus

UNION OF INDIA & ANR. ..... Respondents

Through: Ms. Nidhi Raman, CGSC with Mr.

Zubin Singh, Adv. for UOI. (M:

9891088658)

Mr. Naveen Chaklan, Answering

Patent Agent.

Mr. Chander M Lall, Sr. Adv. with

Ms. Nancy Roy, Ms. Archana

Sachdeva, Mr. Sushant M. Singh, Ms.

JUDGMENT

Prathiba M. Singh, J.

1. This hearing has been done through hybrid mode.

W.P.(C)-IPD 9/2023 Page 2 of 60

BACKGROUND FACTS:

2. The present writ petition has been filed by the Petitioner challenging

the abandonment of its patent application number 201911031496 titled

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3. The case of the Petitioner is that he had filed a patent application

through one firm “M/s Delhi Intellectual Property LLP” (hereinafter

referred as the ‘firm’) having office at 4-K, 4th Floor, Gopala Tower, 25,

2019 and a request for examination was filed on 21st February, 2022.

Thereafter, the FER in respect of the subject application was issued on 29

April, 2022 with a direction by the Patent Office that the response should be

filed within a period of six months.

5. It is the case of the Petitioner that repeated follow ups were made by

him with the firm and Mr. Chaklan on various dates i.e., 15th March, 2022,

28th August, 2022, 5

December, 2022, 22

Petitioner found out that the application was “deemed to be abandoned” due

Patent Agent. Finally, the Petitioner filed a request for restoring the patent

application on 28th January, 2023. Hence, the present writ petition. On 31

has appeared and made submissions.

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ARGUMENTS:

6. Notice was issued in this matter on 15

February, 2023, and

submissions have been heard. The same are captured below:

circumstances wherein despite follow ups, the Patent Agent did not

respond and thus the Petitioner ought to be given benefit of the said

decision.

iii. Mr. Grover submits that repeated emails by the Petitioner from 19

February, 2022, 15

March, 2022, 28

August, 2022, 5

2022, 19

replied.

iv. On 22nd September, 2022, the Petitioner came to know that the status

abandoned” and the query was raised with the Patent Agent, however,

another partner in the firm Delhi IP, however, received no reply.

Thus, it is submitted that the Petitioner cannot be blamed for the

v. Finally, Mr. Grover, submits that the six months period for replying to

the examination report ended on 28th October, 2022. The Petitioner

had the option of making an application for the three months

W.P.(C)-IPD 9/2023 Page 5 of 60

extension prior to the expiry of the said six months period, however,

after continuously following up finally a revival request form was

filed on 28th January, 2023 by the Petitioner. Since on the website

and has confirmed the same on 15th March, 2022.

ii. Thereafter, the First Examination Report (FER) was issued on 29th

April, 2022. The only communication as per him was one incoming

telephone call after the issuance of the FER and a second outgoing

call on 10th September, 2022 for 57 seconds.

iii. According to him, no instructions were given by the Petitioner and

hence he could not reply to the FER but he had communicated the

issuance of the FER.

record informing the Petitioner about the issuance of a FER, he

email except the telephone calls.

v. He, further, submits that the Petitioner did not even give the power of

who submits that till February, 2022 the Petitioner has paid the fee for

filing of the request for examination of Rs.6,000/- as is evident from

the email dated 13th February, 2022.

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8. On behalf of the CGPDTM, Ms. Nidhi Raman, ld. Counsel submits

that the Petitioner has followed up till March, 2022 and, hence, ought to

have been aware that the request for examination has been filed and the next

9. The Court has considered the matter. The chronology of events in this

case would show that the situation is quite unfortunate. The firm-Delhi

Intellectual Property LLP has clearly not shown diligence in communicating

the issuance of the First Examination Report (‘FER’) to the Petitioner after

the filing of the Request for Examination (‘RFE’). The Petitioner was also

not informed that the Reply to the FER is to be filed. The matter appears to

have been followed up till the RFE, however, after the FER is issued for

some reason, the firm and the Patent Agent- Mr. Chaklan did not inform the

on record to show at any point that the same was informed to the Petitioner.

correspondence, however, thereafter, there is complete silence. Repeated

emails of the Petitioner have gone un-replied and the reason for the same is

submission of the Patent Agent is that there were two telephonic

conversations.

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10. An FER by its very nature is an extremely technical document which

requires detailed discussion with the inventor and the client for preparation

of a reply. It is incomprehensible as to how a discussion relating to the FER

detailed as is evident from a perusal of the FER itself. There are objections

as to novelty, inventive step and patentability etc,. Thus, the Patent Agent

cannot escape responsibility by simply stating that he had discussed it in a

telephonic conversation or has informed the Petitioner over a telephonic call.

Prosecution of patents is a technical matter, which requires detailed

discussion with clients as also inventors. Patent Agents are now the only

persons who can prosecute patents before the patent office and have

enormous responsibility on their shoulders to ensure that valuable

The record reveals that the emails have been sent continuously by the

12. A patent application is a valuable asset for an individual inventor such

as the Petitioner. The availability of access to the IP office website cannot

may not have the resources to access the IP office website and the technical

expertise to understand the same. It is for this reason that Patent Agents are

engaged by inventors and applicants. The mere fact that the FER would be

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uploaded on the website may not be sufficient to hold that the Petitioner had

notice of the FER. The Petitioner at the earliest possible time i.e., between

December, 2022 and January, 2023 has taken steps to try and apply for

application was treated as ‘deemed to have been abandoned’ under section

21(1) of the Patents Act, 1970. The Court observed therein that Courts

exercising writ jurisdiction ought to be liberal in cases where the mistake is

on behalf of the Patent Agent. Any mistakes committed on behalf of the

Patent Agents should be treated in a similar manner as that of

counsels/advocates. The relevant portion of the judgment has been extracted

herein below:

“60. The Court is convinced that there was no

intention to abandon on behalf of the Petitioner,

instead, the Petitioner’s actions indicate that they were

actively pursuing the application. Moreover, the

judicial opinion in respect of responses to FER or

other deadlines seems to suggest that if the Applicant

did not have an intention to abandon and if the Court

is convinced that there was a mistake of the patent

agent and the Applicant is able to establish full

advocate who may be representing parties in any civil

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committed by counsels/advocates are concerned, the

in a number of decisions including Smt. Lachi Tewari

& Ors. v. Director of Land Records 1984 Supp. SCC

Secretary, Department of Horticulture, Chandigarh v.

Raghu Raj AIR 2009 SC 514.

attributed to the Applicant, this Court is of the opinion

that the Applicant ought not to be made to suffer.

would like to add in this regard. The intention of the

Legislature in Rule 138 of the Rules cannot be ignored

by the Controller, nor can one ignore the express

language of Section 21(1) of the Act, which mandates a

deemed abandonment in case of non-compliance with

the requirements imposed under the Act. It is only in

extraordinary cases, while exercising writ jurisdiction,

that the Court may consider being flexible, and this

would depend on the facts of each case as to whether a

the Applicant, this Court is of the opinion that the

Applicant ought not to be made to suffer. However,

there is a word of caution that this Court would like to

add in this regard. The intention of the Legislature in

Rule 138 of the Rules cannot be ignored by the

Controller, nor can one ignore the express language

of Section 21(1) of the Act, which mandates a deemed

abandonment in case of non-compliance with the

requirements imposed under the Act. It is only in

case as to whether a condonation ought to be given at

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CGPDTM to take the response to the FER on record and the applications be

restored to their original position.

18. Under such circumstances, this Court is inclined to hold that the filing

abandonment order on the website and, thereafter, proceed with the patent

application of the Petitioner in accordance with law.

Role of Patent Agents and Regulation of their conduct:

19. The directions given above are in the context of revival of the patent

application, only insofar as the Petitioner is concerned. However, the matter

would not end here, as it is noticed by the Court on many occasions, that

there is lack of diligence by Patent Agents which is resulting in valuable

patent applications being abandoned or lapsed. Such dereliction by Patent

alia, –

period;

ii. Non-communication of issuance of FER to the client/applicant;

iv. Non-communication of hearing notice(s) issued by the

Controller

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v. Failure to file written submissions, within the requisite period,

after hearing before the Controller

vi. Non- communication of notice of pre/post-grant opposition

x. Failure to file information about corresponding patent

applications in other jurisdictions as per section 8 of the Patents

Act, 1970

xi. Non filing of working statement(s) under Form 27 in terms of

the period prescribed under Patent Rules, 2003

xii. Failure to submit annuities for renewal of the patent.

20. Such lack of diligence which could either be due to simple

negligence, accident, or incorrect logging of dates in a database etc. may

abandonment of the application itself, without further scope for revival. It is

extraordinary jurisdiction, High Courts may permit revival.

21. Patent Agents have an important function in the system of granting

themselves as Patent Agents even without any qualifications in scientific or

technical subjects. However, the framework for Patent Agents has

undergone a substantial change since 2003. In order to qualify as a Patent

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Agent, it is compulsory for a candidate to hold a qualification in any science

subject. In addition, candidates have to undertake an examination which

tests their knowledge of the Act, Rules, patent prosecution procedures etc.

confidential in nature for a business or applicant, as the agent could be

contacted even when the invention is under conception and development. At

that stage, the Patent Agent has to duly advise the client on the maintenance

of records. The Agent has to maintain utmost confidentiality and preserve

the trust of the client/applicant. Prior art search may be required to be

conducted. The drafting of the patent specification, bearing in mind the state

of the art, prior art and the invention of the client is an art which involves

expertise – both technical and legal, on the part of the Patent Agent.

accordance with the needs of the client. Some clients may want to seek

commercial launch of the product. Thus, the Patent Agent’s role goes hand-

in-hand with the inventor/applicant. Even after filing of the application,

require to maintain constant vigil and periodically check the website of the

IPO to ensure that all procedural formalities are completed, if any objections

are raised. The stage of issuance of the FER and the reply thereto is also

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extremely crucial. Considering the expanse of the duties and functions of

Patent Agents, any carelessness, professional negligence or misconduct,

unless accidental or inadvertent, deserves to be dealt with in a stringent

Chapter 21 of the Act is dedicated to Patent Agents. Under Section 125, a

register of Patent Agents is maintained by the Controller General which

contains the particulars of all Patent Agents who are qualified. The

qualification of Patent Agents are also prescribed in Section 126 as under:

“126. Qualifications for registration as patent

agents.—(1) A person shall be qualified to have his

name entered in the register of patent agents if he

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but ceased to hold any such capacity at the time of

(2) Notwithstanding anything contained in sub-section

(1), a person who has been registered as a patent agent

required to be re-registered, as a patent agent, on

payment of the fees as may be prescribed.”

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ii. If the agent has been convicted of any offence or has been held

guilty of misconduct in a professional capacity which renders

him unfit.

specifications, appearing or acting before the patent office. Advocates who

are not Patent Agents can only take part in a hearing before the Controller,

thus, in effect Patent Agents have an exclusivity in addition to the inventor

or applicant in drafting, filing, prosecuting patent applications.

28. For the present purposes, however, it would be relevant to note that

the name of a Patent Agent can be removed if the Patent Agent is guilty of

misconduct in his professional capacity. Such a disqualification also exists

in Rule 114 of the Patents Rules 2003 which reads as under:

(ii) is an undischarged insolvent;

(iii) being a discharged insolvent, has not obtained

from the court a certificate to the effect that his

insolvency was caused by misfortune without any

misconduct on his part;

(iv) has been convicted by a competent court, whether

within or outside India of an offence to undergo a term

of imprisonment, unless the offence of which he has

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been convicted has been pardoned or unless on an

(v) being a legal practitioner has been guilty of

professional misconduct; or

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its roll has been guilty of professional or other

misconduct, it shall refer the case for disposal to its

motion or on application made to it by any person

interested, withdraw a proceeding pending before its

made by any other disciplinary committee of that State

Bar Council.]

*** shall fix a date for the hearing of the case and

shall cause a notice thereof to be given to the advocate

concerned and to the Advocate-General of the State.

(3) The disciplinary committee of a State Bar Council

after giving the advocate concerned and the Advocate-

General an opportunity of being heard, may make any

complaint or, where the proceedings were initiated at

the instance of the State Bar Council, direct that the

it may deem fit; (d) remove the name of the advocate

from the State roll of advocates.

(4) Where an advocate is suspended from practice

under clause (c) of sub-section (3), he shall, during the

period of suspension, be debarred from practising in

any court or before any authority or person in India.

(5) Where any notice is issued to the Advocate-General

under sub-section (2), the Advocate-General may

appear before the disciplinary committee of the State

section 38], the expressions “Advocate-General” and

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the Union territory of Delhi, mean the Additional

Where on receipt of a complaint or otherwise the Bar

Council of India has reason to believe that any

misconduct, it shall refer the case for disposal to its

disciplinary committee.

Chapter, the disciplinary committee of the Bar Council

of India may, 7 [either of its own motion or on a report

it by any person interested], withdraw for inquiry

before itself any proceedings for disciplinary action

against any advocate pending before the disciplinary

committee of any State Bar Council and dispose of the

same.

(3) The disciplinary committee of the Bar Council of

India, in disposing of any case under this section, shall

observe, so far as may be, the procedure laid down in

section 35, the references to the Advocate-General in

(4) In disposing of any proceedings under this section

the disciplinary committee of the Bar Council of India

may make any order which the disciplinary committee

of a State Bar Council can make under sub-section (3)

of section 35, and where any proceedings have been

withdrawn for inquiry 1 [before the disciplinary

committee of the Bar Council of India], the State Bar

Council concerned shall give effect to any such order.”

vested with the Bar Council of India under Section 37 and thereafter with

Supreme Court under Section 38. A perusal of the above section 35 would

also show that the Advocates Act, 1961 provides with the mechanism of

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filing complaints, punishments but does not define what professional and

other types of misconducts are. However, an effort has been made by

Courts to define the same through various precedents after analysing

iii. Section III-Duty to Opponent.

iv. Section IV-Duty to Colleagues.

v. Section V-Duty in imparting training.

vi. Section VI-Duty to render legal aid.

vii. Section VIII- Restriction on other employments

ix. Code of conduct and disqualification.

34. Failure to adhere to the aforementioned etiquettes and standards of

Advocates. The Bar Council of India Rules prescribe in detail the manner in

against the Advocates conduct, such a complaint can be lodged with the

State Bar Council and the same would be proceeded with, in accordance

with respect to the trademark/patent agents. However, no such mechanism

or framework exists in respect of Patent Agents who perform crucial

functions in the innovation ecosystem.