LI Network
Published on: 8 September 2023 at 15:05 IST
The Delhi High Court has made a significant observation, stating that patent and trademark agents do not fall under the jurisdiction of the Bar Council of India or the Advocates’ Act, 1961.
Justice Prathiba M Singh also highlighted the pressing need for a supervisory or regulatory authority to oversee the activities of trademark and patent agents.
In response to this issue, the court has requested information on how the Office of the Controller General of Patents, Designs & Trade Marks intends to govern and supervise the operations of trademark and patent agents.
The court emphasized that these agents bear substantial responsibilities, including the submission, registration, and maintenance of trademarks and patents, as well as the diligent handling of pleadings and related matters.
Acknowledging the consistent growth in trademark and patent applications filed with the Indian IP Office over the past five years, the court clarified that individuals wishing to become patent agents must meet specific eligibility criteria outlined in the Act and Rules, and they must also pass an examination.
These patent agents do not fall under the purview of the Bar Council of India or the Advocates’ Act, 1961.
Justice Singh further noted, “There are repeated cases wherein litigants have raised allegations against such Trade Marks Agents and Patent Agents, and apart from reprimand from courts, there are no other consequences that visit them.”
The court’s decision arose from a petition filed by Saurav Chaudhary, who challenged the abandonment of his patent application titled “Blind-Stitch Sewing Machine and Method of Blind Stitching” and sought the restoration of the patent application.
Chaudhary’s claim stated that he filed the patent application in August 2019, with a request for examination submitted in February 2022. The first examination report was issued on April 29 of the same year, with the Patent Office stipulating that a response should be filed within six months.
Despite multiple follow-ups, Chaudhary received no response from the patent agent. Upon discovering that the application had been deemed abandoned due to the failure to respond to the first examination report, Chaudhary engaged a new patent agent and applied for the restoration of the patent application in January.
The court had previously issued a notice to the patent agent, who held a Masters of Pharmacy (M. Pharma) degree and was an enrolled lawyer. The agent explained that his firm had another partner and two additional lawyers working within the firm, and they handled litigation before district courts in intellectual property matters.
In response to the court’s inquiry about unanswered emails from Chaudhary, the agent mentioned the need to verify his email account before providing a response.
Justice Singh directed the patent agent to submit an affidavit elucidating the circumstances that led to the abandonment of the application, along with disclosing the correspondence with Chaudhary following the patent application’s filing.
The court further ordered, “Let Ms. Nidhi Raman, ld. CGSC [Central Government Standing Counsel] obtain instructions as to the manner in which the office of the CGPDTM intends to regulate or supervise the functioning of trademark agents and patent agents, and a report be filed in this regard by the next date of hearing.“