# Relief Granted to Foreign Patent Applicant Due to Agent's Error in Deadline Calculation: Madras High Court Allows Delayed Examination Request
## Introduction
The realm of intellectual property law, particularly patents, is governed by stringent timelines designed to ensure efficiency and prevent undue delays in the prosecution process. However, these timelines can sometimes lead to unintended consequences when errors occur on the part of agents or representatives acting on behalf of applicants, especially in cross-border scenarios where communication and coordination across jurisdictions add layers of complexity. The recent judgment from the Madras High Court in Edward Charles Troppi Smythe v. Controller General of Patents Designs and Trade Marks serves as a pivotal illustration of judicial intervention in such matters. In this case, the court exercised its equitable powers under writ jurisdiction to condone a delay in filing a request for patent examination, attributing the lapse to an inadvertent mistake by the Indian patent agent rather than any intentional abandonment by the petitioner, a US citizen. This decision underscores the balance between statutory rigidity and the protection of substantive rights, particularly for foreign applicants reliant on local agents. It builds on prior precedents to affirm that negligence by an agent should not result in the forfeiture of a genuine invention's patent rights, especially when the invention pertains to advanced technologies like satellite conjunction prediction using machine learning. By allowing the writ petition, the court not only rectified the procedural oversight but also highlighted the evolving interpretation of Sections 11B and related rules under the Patents Act, 1970, emphasizing bona fide efforts and the absence of contributory negligence. This ruling has broader implications for international patent filers, reinforcing the judiciary's role in mitigating the harsh effects of procedural defaults while upholding the integrity of the patent system.
## Factual Background
The petitioner, Edward Charles Troppi Smythe, a US citizen residing in San Diego, California, is the inventor of a sophisticated system for the prediction, visualization, and remediation of satellite conjunctions in low Earth orbit. This invention leverages machine learning to address the challenges posed by the growing number of orbiting bodies, enabling faster identification of potential collisions—up to 30 days in advance—compared to traditional supercomputer-based methods. Smythe filed a provisional patent application in the US on September 10, 2021, followed by a second US patent application on September 8, 2022. Subsequently, on September 9, 2022, he filed a Patent Cooperation Treaty (PCT) application claiming priority from both US filings. The Indian patent application in question, numbered IN202447028876, was submitted by the petitioner's Indian patent agent, claiming priority from the initial US application dated September 10, 2021. This application was part of a broader international strategy to secure protection for the invention across multiple jurisdictions. The US IP attorneys, overseeing the global prosecution, engaged an Indian firm to handle the Indian proceedings and regularly inquired about compliance with formalities. The Indian patent agent assured them that all requirements had been met. However, on October 14, 2024, the agent sent an email reminder stating that the deadline for filing the request for examination was April 8, 2025. This communication stemmed from a critical miscalculation: the agent erroneously computed the 31-month statutory period from the second US priority date of September 8, 2022, instead of the first priority date of September 10, 2021. Consequently, the actual deadline of April 10, 2024, was missed, leading to the lapse of the examination request period. Unaware of the error, the petitioner continued under the bona fide belief that time remained. It was only when the agent attempted to file Form 18 on December 10, 2024, that the Indian Patent Office's web portal rejected it as "Not valid." The petitioner promptly emailed the online services support on the same day seeking assistance, noting that the application status showed "Awaiting request for examination" but the filing access was non-functional. On December 30, 2024, the Patent Office responded, confirming the expiry of the period and deeming the application abandoned. These events precipitated the filing of the writ petition, highlighting the petitioner's diligent follow-up contrasted against the agent's inadvertent oversight in priority date calculation.
## Procedural Background
The writ petition, WP (IPD) No. 12 of 2025, was instituted before the Madras High Court seeking a writ of mandamus to direct the respondents—the Controller General of Patents, Designs and Trade Marks in Mumbai, the Joint Controller of Patents and Designs in Chennai, and the Union of India—to accept the delayed request for examination under Form 18 for the Indian patent application IN202447028876 and process it in accordance with law. The matter came up for hearing on December 18, 2025, before the Honourable Mr. Justice N. Anand Venkatesh. Ms. Preeti Mohan appeared for the petitioner, arguing the inadvertent nature of the delay due to the agent's error and relying on the precedent in Chandra Sekar v. Controller of Patents and Designs (2022 SCC OnLine Mad 5172) to contend that the petitioner's statutory rights should not be lost without evidence of intentional abandonment. The respondents were represented by Mr. K. Subbu Ranga Bharathi, the Central Government Standing Counsel, who maintained that the 31-month period under Section 11B had expired, resulting in deemed abandonment, and thus no interference was warranted. The court examined the relevant provisions: Section 11B of the Patents Act, 1970, which mandates a request for examination within the prescribed period; Rule 24B(1) of the Patents Rules, 2003, originally setting a 48-month timeline reduced to 31 months effective March 15, 2024; and Rule 138, allowing a one-month extension by the Controller, effectively extending the total period to 36 months in practice, though the court clarified the combined effect as up to six months in certain readings. The hearing focused on whether the delay constituted intentional abandonment or mere agent negligence, with the court extracting key paragraphs from the relied-upon judgments to analyze the petitioner's position. No oral evidence was adduced, and the matter was disposed of through a speaking order uploaded to the web copy, directing service to the respondents for compliance.
## Reasoning and Decision of Court
In its detailed reasoning, the Madras High Court meticulously dissected the statutory framework and factual matrix to arrive at a balanced decision favoring equity over strict procedural adherence. The court first acknowledged the undisputed expiry of the 31-month period on April 10, 2024, but pivoted to the core inquiry: whether the lapse indicated intentional abandonment or stemmed from an inadvertent mistake by the Indian patent agent. Drawing from the precedent in Chandra Sekar v. Controller of Patents and Designs, the court extracted paragraph 14, which emphasized that sheer negligence by the Indian attorney, absent contributory negligence or intent to abandon by the applicant, should not deprive the petitioner of valuable statutory rights. The judgment in Chandra Sekar had itself considered the Delhi High Court's ruling in Bry-Air Prokon Sagl v. Union of India (W.P.(C)-IPD 25/2022, dated October 17, 2022), which elaborated on abandonment, holding that unless there is clear intent to forgo the right to examination, an applicant cannot be wholly deprived due to an agent's error. Applying this to the instant case, the court found a valid ground in the agent's miscalculation of the priority date—from the second US filing on September 8, 2022, instead of the first on September 10, 2021—leading to the petitioner's bona fide belief in a later deadline of April 8, 2025. The court noted the petitioner's proactive steps, including immediate email queries upon rejection of the filing attempt, underscoring no concrete evidence of inaction or abandonment intent. Furthermore, it highlighted the petitioner's status as a US citizen dependent on the Indian agent appointed by US attorneys, a factor that could not be overlooked in international patent prosecution. The abstract of the invention was extracted to underscore its technological significance: a machine learning-based system for predicting satellite conjunctions orders of magnitude faster than state-of-the-art methods, enabling prioritization, visualization, and remediation of orbital risks. Weighing these elements, the court concluded that the nature of the invention and the absence of abandonment intent warranted intervention. Consequently, the writ petition was allowed without costs, directing the respondents to accept the Form 18 request and process the application expeditiously in accordance with law, thereby restoring the petitioner's right to examination and preventing the loss of a potentially groundbreaking patent due to procedural inadvertence.
## Point of Law Settled in the Case
This judgment settles a crucial point of law under the Patents Act, 1970, particularly regarding the interpretation and application of Section 11B read with Rules 24B and 138 of the Patents Rules, 2003, in cases of delayed requests for examination due to agent errors. It establishes that the statutory timeline for filing a request for examination, while mandatory, is not an absolute bar to judicial relief in writ proceedings when the delay arises from inadvertent negligence by the Indian patent agent, provided there is no evidence of intentional abandonment or contributory negligence by the applicant. The court clarified that the combined effect of the provisions allows for an effective extension up to six months, but beyond that, abandonment is deemed only if intent is proven; otherwise, equitable considerations prevail, especially for foreign applicants reliant on local representatives. This ruling reinforces the principle that valuable statutory rights in patent prosecution cannot be summarily extinguished due to an agent's miscalculation, such as erroneous priority date computation, and mandates that the Patent Office must consider the applicant's bona fide efforts and the invention's merit before deeming an application withdrawn. It aligns with and expands upon precedents like Chandra Sekar and Bry-Air Prokon Sagl, providing a safeguard against procedural technicalities undermining substantive innovation rights, thereby promoting fairness in India's patent ecosystem for international filers.
## Case Detail
**Title:** Edward Charles Troppi Smythe v. The Controller General of Patents Designs and Trade Marks & Ors.
**Date of Order:** 18-12-2025
**Case Number:** WP (IPD) No. 12 of 2025
**Neutral Citation:** Yes/No (Not specified in document)
**Name of Court:** High Court of Judicature at Madras
**Name of Hon'ble Judge:** Mr. Justice N. Anand Venkatesh
**Headnote:** In a landmark decision, the Madras High Court condoned a delay in filing a patent examination request under Section 11B of the Patents Act, 1970, attributing it to an Indian agent's inadvertent miscalculation of the priority date, and directed acceptance of the request absent evidence of intentional abandonment by the US applicant, thereby protecting substantive rights in innovative satellite technology.
**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
**Suggested Titles:**
1. Judicial Relief for Delayed Patent Examination: Madras HC Overrules Agent's Error in Priority Calculation
2. No Abandonment Without Intent: Madras High Court Restores Rights in Satellite Conjunction Prediction Patent
3. Equity Over Technicality: Condemnation of Delay in Indian Patent Request Due to Agent Negligence
**Suggested Tags:** Patent Law, Section 11B Patents Act, Request for Examination, Agent Negligence, Priority Date Miscalculation, Writ of Mandamus, Madras High Court, International Patent Filing, Satellite Technology, Machine Learning Invention, Abandonment of Patent Application, Patents Rules 2003
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The US citizen petitioner Edward Charles Troppi Smythe filed an Indian patent application IN202447028876 for an invention involving machine learning-based prediction, visualization, and remediation of satellite conjunctions, claiming priority from his first US provisional application dated 10.09.2021. Due to an inadvertent error by the Indian patent agent, who wrongly calculated the 31-month deadline for filing the request for examination (Form 18) from the second US priority date of 08.09.2022 instead of the first, the agent informed the petitioner of a deadline of 08.04.2025, whereas it had actually expired on 10.04.2024 under Section 11B of the Patents Act, 1970 read with amended Rule 24B(1) of the Patents Rules, 2003. The agent attempted to file the request belatedly on 10.12.2024, which was rejected as invalid by the Patent Office portal, and on 30.12.2024 the office confirmed the period had expired, deeming the application abandoned. The petitioner, upon learning of the lapse, promptly sought assistance and filed the writ petition WP (IPD) No. 12 of 2025 before the Madras High Court seeking a mandamus to accept and process the delayed request. The court, after hearing both sides, held that the delay stemmed from the agent's inadvertent mistake in priority date computation rather than any intentional abandonment by the petitioner, who had diligently followed up through US attorneys and showed no contributory negligence. Relying on Chandra Sekar v. Controller of Patents and Designs (2022 SCC OnLine Mad 5172) and the Delhi High Court's ruling in Bry-Air Prokon Sagl v. Union of India (W.P.(C)-IPD 25/2022 dated 17.10.2022), the court emphasized that valuable statutory rights cannot be forfeited due to agent negligence absent evidence of intent to abandon, particularly for a foreign applicant dependent on local representation, and considering the invention's innovative nature in satellite technology. Accordingly, the writ petition was allowed without costs, directing the respondents to accept the Form 18 request and process the application expeditiously in accordance with law.
**Points of law settled in the case:**
- The statutory 31-month timeline under Section 11B of the Patents Act, 1970 read with Rule 24B(1) of the Patents Rules, 2003 (as amended w.e.f. 15.03.2024) for filing a request for examination is mandatory, but courts in writ jurisdiction may intervene to condone delay and restore the application where the lapse results solely from inadvertent negligence or error by the Indian patent agent, without contributory negligence or intent to abandon by the applicant (paras 15-18, 20-21).
- Abandonment of a patent application under the Act is deemed only upon clear evidence of intentional relinquishment; it cannot be presumed merely from procedural default due to agent mistake, especially for foreign applicants reliant on local agents (paras 16-17, relying on Chandra Sekar v. Controller of Patents and Designs, 2022 SCC OnLine Mad 5172 at para 14, and Bry-Air Prokon Sagl v. Union of India, W.P.(C)-IPD 25/2022 dated 17.10.2022).
- In the absence of concrete material showing the applicant's inaction or disinterest, and where bona fide efforts to prosecute are evident, the court will protect substantive patent rights over strict technical adherence to timelines, preventing forfeiture of innovative inventions (paras 18, 20).
**Case Title:** Edward Charles Troppi Smythe Vs. The Controller General of Patents Designs and Trade Marks & Ors.
**Order date:** 18-12-2025
**Case Number:** WP (IPD) No. 12 of 2025
**Neutral Citation:** Not specified in the judgment (web copies indicate no neutral citation assigned)
**Name of court:** High Court of Judicature at Madras
**Name of Judge:** Mr. Justice N. Anand Venkatesh
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
