Background and judicial overview
Saurav Chaudhary (hereinafter ‘Applicant’) filed a patent application through M/s Delhi Intellectual Property LLP for his invention "Blind-Stitch Sewing Machine and Method of Blind Stitching" in 2019. The application was allotted an application number 201911031496 dated 3rd August 2019.
The First Examination Report (FER) in respect of the patent application was issued on 29th April 2022. The applicant to the instant patent application sent several reminders to the handling agent, Mr. Naveen Chaklan of M/s Delhi Intellectual Property LLP to respond to the FER. The handling agent failed to respond to the FER within the prescribed time of 6 months from the date of issuance of the FER, despite the reminders. This resulted in abandonment of the instant patent application. Aggrieved by the fate of his patent application, Saurav Chaudhary, filed a Writ petition to seek restoration of the subject patent application.
The pivotal role of patent agents
The abandonment of the subject patent application brought forth the professional conduct of Mr. Chaklan. Hon’ble High Court laid emphasis on pivotal role of patent agents in handling patent applications in India. Interestingly, during the course of legal proceedings, the Delhi High Court noted that patent and trade mark agents are not subject to jurisdiction of the Bar Council of India or the Advocates’ Act, 1961.
Justice Pratibha Singh emphasised the lack of an overseeing or regulatory body to monitor conduct of trade mark and patent agents. The Court drew parallels between the negligence of patent agents and advocates, highlighting that the consequences for clients are severe in both cases. This analogy suggests that the standards of professional conduct applicable to legal practitioners should also apply to patent and trade mark agents.
Considering the above, the Court issued directives to “draft Code of Conduct to regulate Patent and Trademark Agents be prepared and a framework be also put in place for dealing with complaints against Trademark Agents and Patent Agents. Until then if any complaint is filed against any Trademark or Patent Agent before the office of the CGPDTM the same shall be considered and decided by ad-hoc Committee consisting of at least two officials from the trade mark/patent office and one senior IP practitioner with at least 15 years of practise as also registered as a Patent/Trademark Agent. The ad-hoc Committee be notified within two months."
The code of conduct could address specific issues highlighted in the judgement, including*:
- Failure to submit requests for examination within the stipulated timeframe.
- Lack of communication regarding the issuance of First Examination Reports (FERs) to clients/applicants.
- Failure to respond to FERs and subsequent follow-ups.
- Neglecting to inform clients of hearing notices issued by the Controller.
- Not submitting written submissions within the required period after hearings.
- Ignoring notices of pre/post-grant opposition and failing to meet response deadlines.
- Omitting to disclose information about corresponding patent applications in other jurisdictions, as mandated by Section 8 of the Patents Act, 1970.
- Failing to file working statements under Form 27 within the specified period.
- Neglecting to pay annuities for patent renewals.
It is essential to implement a robust code of conduct, integrated into a comprehensive regulatory framework that promises to uphold professionalism, protect clients' interests, and uphold the integrity of intellectual property practitioners.
* Our thanks to spicyIP who we duly acknowledge for their work on the list
FICPI's view and involvement
FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.
Next steps
- Search for FICPI members in India by navigating to the FICPI member directory and searching by country.
- Events such as FICPI’s 2024 Open Forum (25-28 September, Madrid) offer the opportunity to attend technical sessions, and to meet and further discussions in congenial surroundings.