In light of the recent directions to the CGPDTM by the Delhi High Court for preparing and notifying the Code of Conduct to regulate patent and trademarks agent, we are pleased to bring to you this post by SpicyIP intern Aditya Bhargava. Aditya is a third-year law student at NLSIU Bangalore. He is interested in intellectual property, AI regulation and tech law. His previous posts can be accessed here.
FER-ocious Negligence: Delhi High Court to Patent Agents – Shape Up or Ship Out!
By Aditya Bhargava
In one of the earlier posts dealing with a previous order from the Delhi High Court in this case, Lokesh had made out a case in favour of regulation of patent and trademark agents. Interestingly, the same has also been raised earlier by Prashant, Aparajita, and Praharsh. Responding to some of the questions that Lokesh had raised regarding how such a mechanism would play out, Justice Prathiba Singh ordered the CGPDTM for the issuance of a detailed set of guidelines/suggestions to solve the problem posed by this case and several others recently.
In the case of Saurav Chaudhary vs. Union of India & Anr, negligence by a patent agent led to the abandonment of a patent application. In ruling in favour of the plaintiff, Justice Pratibha Singh of the Delhi High Court responded to this rising concern of negligence and misconduct among Patent and Trademark agents by ordering the creation of a code of conduct. This post delves into the implications of this judgement, exploring whether implementing such a code can effectively address and mitigate these issues.
Case Background and Judicial Observation
For the Uninitiated: The petitioner, Saurav Chaudhary, filed a patent application for “Blind-Stitch Sewing Machine and Method of Blind Stitching” on August 3, 2019, through M/s Delhi Intellectual Property LLP, with Mr. Naveen Chaklan as the responsible patent agent. Despite multiple follow-ups from the petitioner, Mr. Chaklan failed to respond to the First Examination Report (FER) issued on April 29, 2022. Consequently, the application was deemed abandoned, prompting the petitioner to engage another patent agent to request the restoration of the patent application, resulting in the present writ petition.
Justice Prathiba Singh noted the absence of written communication from Mr. Chaklan regarding the FER, despite several reminders from the petitioner. This negligence was pivotal in the application’s abandonment. Justice Singh emphasised the critical role of patent agents in ensuring the proper prosecution of patent applications, which includes timely communication with clients and adherence to procedural requirements. The Court referenced previous judgments, including the European Union Represented by the European Commission v. Union of India & Ors. (as suggested by Lokesh) , where it was held that the Courts should be liberal in cases where mistakes were made by patent agents, similar to how they treat mistakes made by legal counsel. The Court also cited cases like Rafiq & Anr v. Munshilal, emphasising that litigants should not suffer due to their representatives’ errors or negligence. The Court opined that in extraordinary circumstances, it is within its writ jurisdiction to allow flexibility and condone delays, especially when the applicant has shown diligence and there is clear evidence of negligence on the part of the patent agent. The Court stressed that the legislative intention behind strict timelines cannot be ignored, but exceptional cases warrant a liberal approach to prevent undue harm to applicants. While the Court ruled in favour of the plaintiff, it issued certain directions that are worth taking a look at.
- “A draft Code of Conduct to regulate Patent and Trademark Agents be prepared and put up by the CGPDTM on its website within two months for stakeholder consultation. The Code of Conduct be then, thereafter, be notified within a period of 6 months from now i.e., latest by 31st December, 2024;
- Within the said period, 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 trademark/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.”
Existing Legal Framework and Call for a Code of Conduct
Currently, legislative solutions exist for governing patent and trademark agents, though they are not effectively enforced. The Patent Act and Rules, specifically Section 130 of the Patent Act and Rule 114 of the Patent Rules, empower the Controller to remove a patent agent’s name from the register for professional misconduct. However, the term “professional misconduct” is not clearly defined, and there is no comprehensive framework for addressing negligence or dereliction of duty by patent agents. (Para 27)
The Court drew parallels between the negligence of patent agents and advocates, arguing that the consequences for clients are equally severe in both cases. (Lokesh had suggested something similar in his post). This analogy is important because it suggests that the standards of professional conduct applicable to legal practitioners should also apply to patent and trademark agents. The Court referred to similar cases where negligence by patent agents resulted in the abandonment of applications, such as The European Union Represented by the European Commission v. Union of India & Ors., and emphasised that patent agents’ mistakes should be treated similarly to those of advocates.
Given these considerations, Justice Singh’s judgement ordered the CGPDTM for a structured framework/guidelines to regulate patent and trademark agents, similar to those in place for other professions like advocates and chartered accountants. (Para 31 to 45) This would involve establishing clear guidelines and definitions for professional misconduct and creating a dedicated body or enhancing the existing framework to oversee the conduct of patent and trademark agents. Moreover, what punishments to impose would be charted out as well. This becomes pertinent given that the only remedy available to the aggrieved parties in cases such as the present one have been through the channels of Article 226 and 32. The only reason these grievances appear as writs before the courts (and clog the docket) is due to the ambiguity that surrounds “misconduct” and “negligence” as per above mentioned provisions.
Viability and Effectiveness of a Code of Conduct
Implementing a code of conduct for patent and trademark agents appears to be viable. A well-defined code of conduct (if drafted properly) can provide clear guidelines for professional behaviour, establishing standards for communication and diligence, and outline the consequences for breaches of conduct. Such a code (as is the case with advocates), when placed within an effective framework as suggested by Justice Singh can enhance the reliability and trustworthiness of patent and trademark agents, ultimately benefiting clients and the intellectual property system as a whole.
A code of conduct could address several specific issues identified in the judgement, including:
- Non-filing of requests for examination within the prescribed period.
- Non-communication of the issuance of FER to the client/applicant.
- Non-filing of replies to the FER and further follow-ups.
- Non-communication of hearing notices issued by the Controller.
- Failure to file written submissions within the requisite period after hearings.
- Non-communication of notices of pre/post-grant opposition and failure to respond within prescribed timelines.
- Failure to file information about corresponding patent applications in other jurisdictions as required by Section 8 of the Patents Act, 1970.
- Non-filing of working statements under Form 27 within the prescribed period.
- Failure to submit annuities for the renewal of patents.
While I don’t advocate for an extremely harsh code of conduct, I believe in having one with necessary flexibility. Professions like law, chartered accountancy, and medicine have similar codes that define responsibilities and establish consequences, helping prevent negligence and holding agents accountable, as seen in this very case. Moreover, the recent crackdown by the government agencies on misleading advertising is also something that is relevant in this particular case. Justice Singh not only points towards the ambiguity that surrounds the definitions of what constitutes ‘misconduct’ and ‘negligence’ but also points towards false and misleading advertising by these agents. As per her directive, the regulatory bodies must provide a remedy (in the code) against agents claiming false and misleading information to dupe clients.
Challenges and Limitations of a Code of Conduct
As promising as the implementation of a code of conduct may sound, it does come with specific challenges and limitations. Chief among these is that such a code can be effective only to the extent that the means of enforcing it work in practice. Lacking stringent monitoring and penalties, the code itself could do little, which might necessitate a superintending body provided with resources and powers to investigate complaints, hold hearings, and impose sanctions. Moreover, the complexity of the patent and trademark law is such that it does not allow for setting rigid norms; it needs to be dynamic enough to adjust to various situations yet clear enough in its standards. The professional community has also been resisting this code as another bureaucratic imposition. These are things that CGPDTM would have to consider while it moves ahead to comply with the Court’s direction.
The efficacy of codes of conduct is often questioned because the mere presence of regulatory provisions does not necessarily yield better professional behaviour. The evidence of history is that, even with codes for both advocates and chartered accountants, cases of misbehaviour still arise, which points to the fact that regulatory bodies are reactive because, in most instances, they wait until complaints are tabled. More importantly, codes of conduct do not address the underlying incentives and pressures placed on professionals by the imperative of efficiency and the antithetical need for diligence. Besides, the imbalance between a client and an agent in terms of resources and expertise can allow a dishonest agent to cheat. In contrast, a code of conduct might not be enough to protect a client from such agents.
Conclusion
The judgement in Saurav Chaudhary v. Union of India & Anr. highlights the pressing need for stricter regulations for patent and trademark agents to combat increasing negligence and misconduct. Justice Prathiba Singh’s call for a detailed code of conduct, similar to those for advocates and chartered accountants, seeks to ensure agents are accountable, provide diligent client service, and maintain the integrity of the intellectual property system. However, the success of such a framework depends on practical enforcement, adaptable standards for complex cases, and overcoming resistance from within the professional community. Despite these hurdles, implementing this code of conduct is essential to reduce professional malpractices and restore trust in patent and trademark agents.