An Applicant should not be allowed to suffer on account of negligence of Patent Agent
Introduction:
This case revolves around the abandonment of a patent application due to a failure to respond to the First Examination Report (FER) within the prescribed period under Section 21(1) of the Patents Act, 1970. The petitioner, Ciena Corporation, approached the Delhi High Court challenging the abandonment order issued by the Indian Patent Office. The case primarily deals with whether a patent applicant should suffer due to a bona fide mistake of its patent agent in failing to respond to the FER.
Detailed Factual Background:
Ciena Corporation, a global leader in networking systems and software, developed an invention titled "Modular Network Element Architecture." The invention is a hybrid between a rack-mounted module and a line module inserted in a chassis. The company filed priority patent applications in the United States Patent and Trademark Office (USPTO) on April 23, 2018. On April 9, 2019, Ciena filed an international patent application (PCT/US2019/026489) under the Patent Cooperation Treaty (PCT) with the World Intellectual Property Organization (WIPO), which published the invention on October 31, 2019.
Ciena entered the Indian national phase by filing a patent application on August 11, 2020, before the Indian Patent Office, New Delhi. On April 15, 2022, Ciena's Indian Patent Agent filed the required forms under the Indian Patent Rules, 2003, requesting an examination and seeking an amendment to the application. The Patent Office issued the First Examination Report (FER) on September 1, 2022, and sent it to Ciena's patent agent. However, due to an inadvertent error, the patent agent failed to inform Ciena about the FER. Consequently, no response was filed within the statutory period.
On February 16, 2024, the Indian Patent Office issued an abandonment letter stating that the application was deemed abandoned under Section 21(1) of the Patents Act, 1970, due to the failure to respond to the FER within the prescribed time. Ciena only became aware of this abandonment on January 23, 2025, through a third party. Upon learning about the abandonment, Ciena immediately contacted its patent agent, who admitted that the FER had not been docketed in his firm’s system, leading to non-communication. The patent agent provided an affidavit on February 25, 2025, acknowledging the mistake.
Detailed Procedural Background:
Ciena filed a writ petition before the Delhi High Court on February 25, 2025, challenging the abandonment order and seeking restoration of its patent application. The petitioner argued that the abandonment was a result of a bona fide mistake of its patent agent, which should not be held against it. The matter was heard by Hon'ble Justice Amit Bansal.
The Court noted that the issue in this case was limited to determining whether the petitioner should be penalized for its patent agent’s error and whether the abandonment order could be set aside under the Court’s writ jurisdiction. With the consent of both parties, the petition was taken up for disposal at the initial hearing stage itself.
Issues Involved in the Case:
The primary legal issue before the Court was whether a patent applicant should be penalized for the mistake of its patent agent in failing to respond to the FER within the prescribed period.
A secondary issue was whether the Court, in exercising its writ jurisdiction under Article 226 of the Constitution of India, could interfere in a case where statutory timelines under the Patents Act had not been met due to an inadvertent error.
Detailed Submission of Parties:
The petitioner argued that it had no intention to abandon the patent application and had actively pursued patent protection for the same invention in multiple jurisdictions. The failure to respond to the FER was due to the negligence of its patent agent, not any fault of the petitioner. Relying on past judicial precedents, Ciena contended that litigants should not suffer due to mistakes made by their legal representatives.
The respondent, represented by the Union of India, opposed the petition, arguing that there was a significant delay in filing the writ petition. The FER had been issued in September 2022, the abandonment order in February 2024, and yet the petition was filed only in February 2025. The respondent contended that the statutory timelines under the Patents Act are strict and cannot be relaxed except under extraordinary circumstances.
Detailed Discussion on Judgments Cited:
The petitioner relied on European Union Represented by the European Commission v. Union of India & Ors., 2022 SCC OnLine Del 1793. The Delhi High Court in that case had held that inadvertent errors by patent agents should not result in the abandonment of patent rights when the applicant had no intention to abandon the application. The Court emphasized that the consequences of abandonment are severe, as the applicant is deprived of exclusivity over its invention.
Other cases relied upon included:
Smt. Lachi Tewari v. Director of Land Records, 1984 Supp SCC 431 – Holding that litigants should not suffer due to mistakes of their legal representatives.
Rafiq v. Munshilal, (1981) 2 SCC 788 – Establishing that clients cannot be penalized for their lawyer’s negligence.
Mangi Lal v. State of M.P., (1994) 4 SCC 564 – Emphasizing that courts should adopt a liberal approach where procedural lapses do not reflect the litigant’s intent.
The Secretary, Department of Horticulture, Chandigarh v. Raghu Raj, (2008) 13 SCC 395 : AIR 2009 SC 514 – Reinforcing that procedural errors should not cause irreversible harm to a litigant’s substantive rights.
The respondent argued that the statutory timelines in patent law are strict and non-compliance results in automatic abandonment. The respondent also cited Rule 138 of the Patent Rules, which does not permit an extension of time for filing a response to the FER beyond the prescribed period.
Detailed Reasoning and Analysis of Judge:
The Court held that the case merited intervention. It emphasized that the petitioner had diligently pursued the patent application globally and had filed the request for examination in India within the prescribed time. The mistake of the patent agent in failing to communicate the FER should not lead to the extreme consequence of patent abandonment.
The Court reasoned that while statutory timelines must generally be adhered to, extraordinary cases where an applicant demonstrates diligence and the failure is attributable solely to legal representatives require a liberal approach. The Court noted that the European Commission judgment fully applied to the present case, as Ciena Corporation had actively prosecuted its patent in multiple jurisdictions and had no intention of abandonment.
The Court balanced the need for strict adherence to patent law procedures with the fundamental principle that no party should suffer due to an error beyond its control.
Final Decision:
The Court set aside the abandonment letter dated February 16, 2024. It restored the petitioner’s patent application to its original status. The petitioner was granted a final opportunity to file a response to the FER within four weeks. The Court directed the Registry to send a copy of the order to the Controller General of Patents, Designs, and Trademarks for compliance.
Law Settled in This Case:
This case reaffirmed that the failure of a patent agent to communicate an examination report to a patent applicant, leading to unintentional abandonment, should not defeat the applicant’s rights. The Court reiterated that procedural errors attributable to legal representatives should not have drastic consequences for litigants. It also clarified that in exceptional circumstances, courts can exercise their writ jurisdiction to remedy unjustified procedural lapses that would otherwise extinguish valuable intellectual property rights.
Case Title: Ciena Corporation Vs Union of India & Ors.
Date of Order: March 7, 2025
Case Number: W.P.(C)-IPD 15/2025 & CM 49-51/2025
Neutral Citation: 2025:DHC:1615
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Justice Amit Bansal
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
