Summary
Delhi High Court restores Ciena’s patent after agent oversight, affirming that patent application revival is possible under bona fide errors. Recognizing the global pursuit and lack of intent to abandon, the Court set aside the IPO’s order and allowed a fresh response to the FER.
Introduction
The Delhi High Court recently delivered a pivotal judgment in Ciena Corporation vs Union of India & Ors., overturning the Indian Patent Office’s decision to abandon a patent application due to a procedural oversight by the applicant’s patent agent. This ruling not only restored Ciena Corporation’s innovative “Modular Network Element Architecture” but also set a compelling precedent for patent applicants in India.
Background
Ciena Corporation (“Ciena”), a U.S. based telecommunications company, filed a writ petition under Article 226 and 227 of the Indian Constitution to challenge a letter dated February 16, 2024, issued by the Indian Patent Office (”IPO”). This letter deemed Ciena’s patent application (No. 202017034476) for a “Modular Network Element Architecture” abandoned due to the failure to respond to the First Examination Report (FER) within the statutory period under Section 21(1) of the Patents Act, 1970.
The invention, a hybrid hardware module with networking, computing, and storage functions, was originally filed in the U.S. in 2018 and subsequently pursued internationally via the Patent Cooperation Treaty (PCT) route.
Key Issues and arguments
The core issue was whether the abandonment of the patent application should stand, given that the failure to respond to the FER stemmed from an inadvertent error by Ciena’s Indian patent agent, who failed to inform the company of the FER issued on September 1, 2022. Ciena only learned of the abandonment on January 23, 2025, during a due diligence check, prompting immediate action.
Ciena argued that it had actively pursued the patent across multiple jurisdictions and had no intention of abandoning the Indian application. They contended that the failure to respond to the FER, was solely due to an inadvertent mistake by their patent agent, who admitted his oversight in an affidavit dated February 25, 2025. Ciena further asserted that they should not be deprived of their patent rights on account of a bona fide mistake committed by the patent agent.
The counsel for the IPO defended the abandonment decision, observing the significant delay between the FER issuance, the Abandonment Letter dated February 16, 2024, and the filing of the writ petition on February 25, 2025.
Court’s Ruling
The Court relied on European Union v. Union of India, 2022 to hold that Ciena should not lose valuable patent rights due to a bona fide mistake made by their patent agent. The Court determined that Ciena’s global diligence in pursuing the patent application, swift response upon discovering the abandonment, and the patent agent’s affidavit admitting the lapse clearly indicated a clear lack of intent to abandon the application. Given these factors, the Court found that granting relief under writ jurisdiction was justified, despite the strict procedural requirements of patent law. The Court stated that such flexibility should be exercised only in extraordinary cases to prevent unjust outcomes.
Conclusion
The Delhi High Court set aside the abandonment letter, restored the patent application, and granted Ciena four weeks to respond to the FER.
Citation: Ciena Corporation vs Union Of India & Ors., W.P.(C)-IPD 15/2025 & CM 49-51/2025 (H.C. Delhi March 7, 2025). Available at: https://indiankanoon.org/doc/86093980/
Article Author: Sushma H. A.
Article Review: Dr. Neetha Mohan
Accessibility Review: Rakesh Krishnan