When hardcoded statutory deadlines are violated, can delays be condoned? This was the central question answered by the Delhi High Court in The European Union Represented by the European Commission vs. Union of India. The court allowed for an extension of a non-extendable statutory deadline in a patent matter because of the exceptional circumstances of the case. The decision, though, came with fair warning that this was in exercise of the court’s discretionary power, and the patent agent could not be excused for the error of its ways. It also raises important questions on the regulation of patent agents and the state of patent prosecution in India.
Facts of the case
The petitioner (patent applicant), through its patent agent, filed two patent application with the Indian Patent Office (IPO) as national phase entries of its Patent Cooperation Treaty (PCT) applications. In accordance with procedure, the IPO proceeded to issue First Examination Reports (FERs) for these applications. However, the patent agent in question failed to inform the applicant of the FERs. As a result, the FERs were not responded to in time, and in accordance with the Indian Patents Act, 1970 (the Act), the application was deemed as abandoned by the IPO.
The applicant then engaged another patent agent to rectify this situation, and the second agent filed for a condonation of delay at the IPO, regularly following up on this. The IPO refused to acknowledge the same, and eventually, the agent and applicant approached the Delhi High Court via writ petitions challenging the Controller’s orders of abandonment.
Two aspects led to the decision going in favor of the applicant:
- The negligence of the first patent agent
- Intention to not abandon the application
Negligence of the Agent
There was ample proof that it was the actions of the first patent agent that led to this entire situation in the first place. Patent agents are expected to know which deadlines are extendable and which are not, and keep applicants apprised of these. The court emphasized the importance of the role of a patent agent and called out the negligence in the present case. Persistent follow-up by the applicant with the first agent regarding the status of their applications, despite not receiving any response or even an acknowledgement, played a significant role in demonstrating that there was no intent to abandon the application.
The court was of the opinion that the entire fault lay with the patent agent and the applicant was not negligent at all in the present case. It was due to reasons beyond the control of the applicant that the application was abandoned and the consequences of the same were being borne by the applicant. On this account, the court noted that the position of a patent agent is akin to that of an advocate, and it is a settled legal principle that the litigant should not suffer due to mistakes made by the counsel/advocate.
Intent of the applicant
It was also argued and shown that there was never an intent to abandon the application by the applicant, that the acts of the first patent agent were contrary to the intention of the applicant, and that the application was deemed abandoned due to the agent’s actions. To demonstrate intent, the applicant showed filings of several counterpart applications in other jurisdictions, some of which had been granted. In addition to this, not only did the applicant demonstrate that they had consistently followed up with the first patent agent and failed to get any response, but also that the second patent agent continually followed up on the application with the IPO. All this worked in the applicant’s favour, and the court condoned the delay and allowed for the patent applications to move forward.
Extraordinary circumstances allow for extension of deadlines
In the normal course of action, such delay would not be condoned by the court. The provisions of the Act and its accompanying Rules make it abundantly clear as to which deadlines and rules can be extended and which cannot. The court itself made it clear that it is unlikely to deviate such deadlines or allow for extensions in the case of non-extendable deadlines.
Judicial opinion in respect of responses to FER or other deadlines seems to suggest that a court ought to be liberal in its approach if (a) it is shown that the applicant did not have an intention to abandon, (b) the court is convinced that there was a mistake by the patent agent; and (c) the applicant can establish full diligence. In such cases, the court said it can be flexible in its approach. In a counterfactual scenario, had the patent applicant not demonstrated intent by, for example, not following up with the first patent agent or not engaging a second patent agent to follow up and check on the status of the application, the judgment could have potentially gone the other way. The court stated it only employed its writ power in such extreme circumstances to guarantee that the applicant’s important statutory rights are not denied.
The court repeatedly emphasized that such delay condonation was a rare event, and it may only be considered after carefully considering the circumstances and concluding that the applicant did not intend to abandon the application. The court also referred to the Parliamentary Standing Committee’s report of July 2021, which had also suggested that some leeway be given to patent applicants in certain circumstances.
The decision of the Delhi High Court while protecting rights of patent applicants in India from unintentional abandonment, also brings into focus the role of patent agents in India and the importance of exercising due diligence. While the decision might have been on the question of judicial discretion and the extension of statutory delays, a more important issue emerges, that of regulating the actions of patent agents themselves. At present, there is no formal regulation of patent agents in India in any form or manner. Unlike Bar Associations, which perform self-regulatory functions to keep the actions of lawyers in check, there is no equivalent for patent agents. There is also no code of conduct that patent agents are expected to abide by or be held accountable to. Surely, this decision is a wake-up call for applicants and the IPO alike to start scrutinizing the performance of patent agents with greater care. Such scrutiny and accountability will have network effects on the quality of patent prosecution and enforcement that will inarguably outweigh the chaos of the present unregulated environment. It is something for the patent community in India to seriously consider putting into action.