Waterotor Energy Technologies Inc v. Union of India & Anr.

1. The present petition has been filed for setting aside the deemed abandonment notice issued by respondent no. 2 in respect of the Indian Patent Application no. 202017037539 under Section 21(1) of the Patents Act, 1970.

2. The basic premise on which the present petition has been filed by the petitioner is that the petitioner is based in Canada and had engaged the First Patent Agent in Canada for filing patent application in India. The First Patent Agent appointed another Second Patent Agent in India, to file and prosecute the patent application in India. On account of certain miscommunications, the petitioner missed the deadline, and the reply to the First Examination Report (“FER”) issued by the respondent no. 2, was not filed on time.

3. Learned counsel appearing for the petitioner submits that he does not wish to go into the issue with respect to the negligence on the part of the First or the Second Patent Agent. He submits that the fact remains that the petitioner never received the communication with respect to the FER.

4. Learned counsel appearing for respondent no. 2 submits that as a matter of course, the communications are sent to the Patent Agents. He submits that the communication was sent to the Second Patent Agent in India, who would have forwarded the same, to the First Patent Agent in Canada.

5. Learned counsel appearing for the Second Patent Agent submits that communication was duly received by the Second Patent Agent from the respondent no. 1 and thereafter, communication was sent to the First Patent Agent in Canada.

6. This Court has heard learned counsels for the parties.

7. At the outset, this Court notes the submission made by learned counsel appearing for the petitioner that the petitioner does not wish to press the issue of negligence by either the First Patent Agent or the Second Patent Agent.

8. Considering the aforesaid, without going into the issue as regards the negligence of any of the Patent Agents, the fact remains that the petitioner did not receive the communication with respect to the FER, on account of which the petitioner missed the deadline and did not file reply to the same. Consequently, the application of the petitioner was held to be deemed as abandoned by respondent no. 2.

9. This Court notes that in the case of Saurav Chaudhary Versus Union of India & Anr., 2024 SCC OnLine Del 4585, it was held as follows: “xxx xxx xxx

10. An FER by its very nature is an extremely technical document which requires detailed discussion with the inventor and the client for preparation of a reply. It is incomprehensible as to how a discussion relating to the FER could have been conducted over one incoming call and one outgoing call in 57 seconds. An FER requires proper application of mind and reply to all the objections. Even if the Patent Agent had informed the client of issuance of the FER, there being no email forwarding of the same or informing next steps, leads to an adverse inference against the Patent Agent.

11. In the present case, the objections that have been raised are quite detailed as is evident from a perusal of the FER itself. There are objections as to novelty, inventive step and patentability etc,. Thus, the Patent Agent cannot escape responsibility by simply stating that he had discussed it in a telephonic conversation or has informed the Petitioner over a telephonic call. Prosecution of patents is a technical matter, which requires detailed discussion with clients as also inventors. Patent Agents are now the only persons who can prosecute patents before the patent office and have enormous responsibility on their shoulders to ensure that valuable innovations are properly protected as per the procedures prescribed in law. The record reveals that the emails have been sent continuously by the Applicant and hence the Petitioner himself has been quite diligent. … … …

18. Under such circumstances, this Court is inclined to hold that the filing of the revival request on 28th January, 2023, ought to be entertained by the Patent Office within the extended period of three months. Accordingly, the abandonment order is set aside and reflection of the same shall be made on the website by the Office of CGPDTM within a period of two weeks from now. The Patent Office shall accept the physical/online reply to the FER which shall be filed within four weeks after the reflection of the said abandonment order on the website and, thereafter, proceed with the patent application of the Petitioner in accordance with law. xxx xxx xxx” (Emphasis Supplied)

10. Considering the submissions made before this Court, and considering the fact that the deadline was missed by the petitioner on account of nonreceipt of the FER issued by the respondent no. 2, this Court sets aside the abandonment order dated 16th February, 2024.

11. Accordingly, the patent application of the petitioner is revived. The respondent no. 2 is directed to show the status of the application of the petitioner as revived in its web portal. For this purpose, two weeks’ time is granted to the respondent no. 2 to reflect the status of the patent application of the petitioner correctly, as pending.

12. Within four weeks of the status of the petitioner’s application being reflected as pending in the web portal of respondent no. 2, the petitioner shall file its reply to the FER. As and when the said reply is filed, the same shall be considered by the respondent no. 2, in accordance with law.