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.
- Due to an inadvertent error, the patent agent failed to inform Ciena about the FER, and 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.
- Ciena only became aware of this abandonment on January 23, 2025, through a third party.
- Upon learning about the abandonment, Ciena contacted its patent agent, who admitted the error and 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.
- The matter was heard by Hon'ble Justice Amit Bansal.
- The Court noted that the issue was 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:
- 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.
- Whether the Court, under Article 226 of the Constitution of India, could interfere where statutory timelines under the Patents Act were not met due to an inadvertent error.
- Detailed Submission of Parties:
- The petitioner argued that:
- It had no intention to abandon the patent application and was actively pursuing patent protection in multiple jurisdictions.
- The failure to respond to the FER was due to the negligence of its patent agent, not the petitioner's fault.
- Litigants should not suffer due to mistakes made by their legal representatives.
- The respondent, represented by the Union of India, argued that:
- There was a significant delay in filing the writ petition.
- 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, where the Delhi High Court held that inadvertent errors by patent agents should not result in abandonment.
- Other cases cited:
- 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
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539
Comments