Introduction
In the case of Saurav Chaudhary v Union of India, decided on July 4 2024, where petitioner is Saurav Chaudhary and respondent is Union of India and others. The Judgement of the court is delivered by Justice Prathiba M. Singh addressing the critical issue of professional negligence by patent agents and the urgent need for the stringent regulation and proper Code of Conduct for patent and trademark Agents in India.
Background of the Case
Case come into the picture when the petitioner challenged the abandonment of its patent application titled “Blind – Stitch Sewing Machine and Method of Blind Stitching” and to restore its patent application. The Petitioner contended that he had filed his patent application through a firm M/s Delhi Intellectual Property LLP which provides registration services for trademarks, patents, copyrights and designs with Mr. Naveen Chaklan as Partner at the firm and was dealing with the Petitioner’s patent application. This application was filed by the petitioner on 3rd August,2019 whose First Examination Report (‘FER’) was issued on 29th April,2022 with a direction of the patent office that the response had to be submitted within six months. Petitioner had repeatedly followed-up with the firm but he did not get any response meanwhile Petitioner then get to know about his application being ‘deemed to be abandoned’ due to non-filing of the FER, subsequently leading the petitioner to engage another patent agent to request the restoration of the patent application, resulting in this writ petition.
Analysis and the Court’s Order
Justice Pratibha Singh noted that the respondent Mr. Chaklan had not shown diligence in communication by not informing the Petitioner regarding the FER, despite of repeated emails from the petitioner, due to which ostensibly petitioner’s application got abandoned. Justice Singh stated that the agent could not escape the responsibility which they have towards their client, which includes timely communication with clients and adherence to procedural requirements.
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Thereafter, the court referred to ‘European Union v. Union of India’, where it was held that courts should be liberal in cases where it was held that the Courts should be liberal in cases where negligence or wrong was done by patent agents, similar to how they treat mistakes of the counsels/advocates. The court stated that in extraordinary circumstances, it is within its writ jurisdiction to allow flexibility and condone delays, especially when the applicant has done his part and duly followed up with the agent regarding the status of the application and there is clear evidence of negligence on the part of the agent. The Court stressed that the legislative intention behind strict timelines cannot be ignored, but in exceptional cases warrant a liberal approach to prevent undue harm to applicants.
The Court observed that the Act does not define what constitutes professional ‘misconduct’ or ‘negligence’ by patent agents. Court held that there is an urgent need for preparing and notifying a proper Code of Conduct for trademark or patent Agents, providing a specific framework and mechanism for lodging a complaint against a trademark/patent agent could be entertained, prescribing factors that would constitute misconduct, setting out how the complaint is to be dealt with, timelines within which action can be taken of, and prescribing penalties that can be imposed.
Furthermore, the court’s order that the Controller General has to take strict actions towards false and misleading advertisement by these agents. The Court also asserted that whenever there is any offering of service for trade mark/patent registrations, it should be compulsory for the name of the agent and his registration number to be mentioned so that the promotional contents can be traced back to whoever is responsible, as without such safeguards, there will be no accountability.
The Court directed office of CGPDTM (Controller General of Patent Design and Trademark) to prepare and put up a draft Code of Conduct on its website within two months and notify the same within six months, latest by 31st dec, 2024 and also laydown guidelines for advertising by these agents.
The Court, while disposing of the petition, ordered to establish interim framework for handling complaints against these agents by mandating an ad-hoc committee to address such complaints, of at least two officials from the trademark/patent office and one senior IP practitioner with at least 15 years of practice as also registered as a trade mark/patent agent.
Hence, the Court set aside the abandonment order and orders that its reflection be made on the website by the office of CGPDTM within two weeks and the Patent office shall accept a physical/online reply to the FER by the petitioner, which shall be filed within four weeks after the abandonment order is reflected on the website.
Conclusion
In this case of Saurav Chaudhary v. Union of India, Justice Prathiba M. Singh on July 4, 2024, adjudicated the critical need for stringent regulations and accountability mechanisms governing patent and trademark agents in India. The case highlights the significant issue of professional misconduct and negligence by trademark and patent agent in the realm of intellectual property rights. Despite repeated follow-ups by Petitioner, his agent Mr. Chaklan failed to respond to the Petitioner about the First Examination Report (FER) issued by the patent office, resulting in the application’s abandonment. This incident brings to light the broader issue of patent agents, not fulfilling their fiduciary duties towards their clients, which can result in substantial harm to the inventors or innovators.
Currently, Section 130 of the Patent Act and Rule 114 of the Patent Rules, are governing patent and trademark agents as it empowers the Controller to remove a patent agent’s name from the register for professional misconduct. The Court pointed out a critical gap in the current legal framework as the term professional misconduct or negligence is not clearly defined under the given act, signifying the formulation of a comprehensive Code of Conduct for patent and trademark agents, detailing what constitutes professional misconduct, the process for lodging complaints, and the penalties for violations. Such a framework is essential to ensure accountability and to uphold the integrity of the intellectual property system.
Implementing this Code of Conduct will robust our country’s intellectual property regimes in fostering innovation. The negligence exhibited by patent agents can stifle this innovation by causing unjust losses to inventors, by undermining the purpose of intellectual property laws. Upholding agents accountable for their conduct would help to maintain public trust and to ensure that the system functions effectively for all stakeholders. However, the success of such framework depends on the practical enforcement, adaptable standards for complex cases and acceptance for such framework within the professional community regarding their liabilities.
Subsequently, the establishment of these framework will definitely curbs the increasing professional malpractice by the agents, ensuring diligent client service.
Author : Amisha Tiwari, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD
References
1. Saurav Chaudhary v. Union of India, 2024 SCC OnLine Del 4585
2. Aditya Bhargava, FER-ocious Negligence: Delhi High Court to Patent Agents- Shape Up or Ship Out!,SpicyIP (6 July, 2024) https://spicyip.com/2024/07/fer-ocious-negligence-delhi-high-court-to-patent-agents-shape-up-or-ship-out.html
3. Editor-04, Delhi High Court directs formation of Code of Conduct to regulate Patent and Trade Mark agents; set aside abandonment order of patent application, SCC Times (6 July, 2024) https://www.scconline.com/blog/post/2024/07/06/delhi-hc-directs-formation-of-code-of-conduct-to-regulate-patent-and-trade-mark-agents-legal-news/
4. Nupur Thapliyal, Prepare And Notify Code Of Conduct To Regulate Patent And Trademark Agents Within 6 Months: Delhi High Court To CGPDTM, Live Law (4 July, 2024) https://www.livelaw.in/high-court/delhi-high-court/prepare-and-notify-code-of-conduct-to-regulate-patent-and-trademark-agents-within-6-months-delhi-high-court-to-cgpdtm-262313