The Delhi High Court in a recent case involving deemed abandonment of a patent application, set aside the notice of abandonment and reinstated the application after it noted that the First Examination Report (FER) had not been reported to the Applicant in a timely manner.
Waterotor Energy Technologies Inc. (“Waterotor”), a Canadian entity, filed a writ petition before the Delhi High Court seeking to set aside the deemed abandonment notice issued by the Patent Office in relation to its Indian Patent Application No. 202017037539. The abandonment was declared under Section 21(1) of the Patents Act, 1970, due to the failure to file a response to the First Examination Report (“FER”) within the prescribed deadline.
Waterotor argued that it had engaged a First Patent Agent in Canada, who in turn appointed a Second Patent Agent in India to handle the patent prosecution. Due to miscommunication between the agents, Waterotor never received the FER, leading to the missed deadline. Waterotor did not wish to press allegations of negligence against either of the agents but emphasized that the lack of receipt of the FER resulted in the deemed abandonment of its application.
The Patent Office contended that communications are routinely sent to the appointed Patent Agents, and in this case, the FER had been duly forwarded by the Second Patent Agent in India to the First Patent Agent in Canada. The Second Patent Agent confirmed that the communication was relayed as per standard practice.
The Court relied on its earlier decision in Saurav Chaudhary v. Union of India & Anr., 2024 SCC OnLine Del 4585, which emphasized that patent prosecution is a technical process requiring proper communication and diligence on the part of Patent Agents. It was observed in that case that failure to adequately convey an FER to the applicant could not be a ground for the applicant to suffer a deemed abandonment of its application.
Taking into account the extraordinary circumstances of the case, including the involvement of multiple agents across different jurisdictions, the Court set aside the abandonment order and directed the Patent Office to update the application status to “pending”. Waterotor was granted four weeks from the status update to file its reply to the FER, which the Patent Office was instructed to consider in accordance with the law. The Court clarified that it had not made any determination regarding alleged negligence by the Patent Agents.
Citation: Waterotor Energy Technologies Inc. v. Union of India & Anr., W.P.(C)-IPD 7/2024 (H.C. Delhi Dec. 9, 2024). Available at: https://indiankanoon.org/doc/170825424/
Authored by Gaurav Mishra, BananaIP Counsels
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