There have been debates and court room comments on the conduct of Patent Agents over the few years since the IP division has started working in High Court of Delhi taking, while never had sensitized to propose a code of conduct until the case of Saurav Chaudhary vs Union of India & ANR (2024:DHC:4946).
Saurav Chaudhary, the petitioner is the applicant of the Indian patent application number 201911031496 titled “A Blind-Stitch Sewing Machine and Method of Blind Stitching using thereof” filed in 2019. The application was abandoned due to the Patent Agent’s failure to respond to the First Examination Report, leading to the loss of valuable intellectual property rights for the Petitioner. Despite the petitioner’s efforts to follow up, communication breakdowns and negligence on the part of the Patent Agent resulted in the abandonment of the application.
The Petitioner then filed the present petition for restoration of the patent application.
The petitioner relied on the decision in European Union Represented by the European Commission v. Union of India and Ors. 2022:DHC:2301 that under exceptional circumstances, the High Court can exercise power under Article 226 to condone delay. There are exceptional circumstances in this case, as the Patent Agent did not even reply to the continuous emails/ follow ups of petitioner, nor acted on his own to meet the crucial deadline to file the response to the first examination report.
The Patent Agent had admitted that there has been no written communication or email from his side except through telephone calls. The Patent Agent also submitted that the Petitioner failed to provide proper instructions and hence he could not reply to the FER.
On behalf of CGPDTM, it was submitted that the petitioner has been regularly following up with the Patent Agent hence, ought to have been aware that the request for examination has been filed and the next step would have been to file the FER. Being available on the internet, petitioner could have checked the FER, and thus decision in the European Union represented by European Commission (supra), could not be applied to the Petitioner.
The court has considered the matter and observed that a patent application is a valuable asset for an individual inventor such as the Petitioner. The availability of access to the IP office website cannot be a ground which can be taken, inasmuch as, most inventors and clients may not have the resources to access the IP office website and the technical expertise to understand the same. The Petitioner at the earliest possible time i.e., between December 2022 and January, 2023 has taken steps to try and apply for revival of the patent application
The Court has observed that The European Union Represented by the European Commission v. Union of India & Ors., 2022:DHC:2301, is a similar case as the present one wherein even after continuous follow ups by the Applicant with the Patent Agent about the status of the patent application during the prescribed period, the Patent Agent did not give any response. Further in The European Union Represented by the European Commission(supra), it was observed that “Any mistakes committed on behalf of the Patent Agents should be treated in a similar manner as that of counsels/advocates.” and “the timelines may be mandatory in nature but the same can be considered by the High Court while exercising writ jurisdiction, under extraordinary situations, to ensure that valuable statutory rights of the Applicant are not completely deprived of”.
The Court has also observed that this position has been further reaffirmed in Bry-Air Prokon Sagl & Ors. v. Union of India & Anr., 2022/DHC/4439 and in W.P. Nos.12620& 12621 of 2021 titled Chandra Sekar v. The Controller of Patents and
Designs & Anr. In the case of Bry-Air Prokon Sagl & Ors. (supra), it was observed that the Petitioners should not suffer for the fault or negligence committed on behalf of the Patent Agent when they have duly followed up with the Patent Agent and there is correspondence to that effect.
Further, in Rafiq and Another v. Munshilal and Another, (1981) 2 SCC 788 , it was observed that a party should not suffer for the inaction, deliberate omission, or misdemeanor of his Agent. In the above case, the Supreme Court observed that even the costs ought to be recovered from the Advocate who was responsible
From the all above decisions, the Court has observed that the facts of the present case fall within the ambit of ‘extraordinary circumstances’, and accordingly, the court has ordered to set aside the abandonment order of the patent application and to the Patent Office to accept the physical/online reply to the FER from the petitioner to be filed within four weeks after the reflection of the said abandonment order on the website
Role of Patent Agents and Regulation of their conduct:
The court has observed that there is lack of diligence by Patent Agents on many occasions which is resulting in valuable patent applications being abandoned or lapsed. The lack of diligence could be either be due to simple negligence, accident, or incorrect logging of dates in a database etc. may trigger the mandatory provisions of the Act, thereby resulting in abandonment of the application itself, without further scope for revival.
The court has observed that patent agents have an important function in the system of granting patents. In order to qualify as a patent agent, he/she must hold a qualification in any science Subject, and in addition they must undertake an examination consists of written test and an interview, even they are made to draft patent applications in the test. After qualified as a registered patent agent, they involve in crucial stages of patents with clients such as prior art searches, patent drafting, filing, prosecution and post grant maintenance. Though there are relevant provisions and definitions for Patent Agents available under the Patents Act, 1970, the Act does not define as to what constitutes misconduct for Patent Agents in professional capacity.
Patent Agents are also conferred with a number of privileges apart from appearing before the patent office and filing patent applications. The Delhi High Court IP Division Rules, 2022 for example, recognize that Trademark and Patent Agents can appear before the Court for assisting the Court.
Patent Agents are granted registration only by the Controller General of CGPDTM and the CGPDTM is the only authority which can, therefore, regulate the conduct of Patent Agents being the head of IP office.
There is no prescribed procedure for dealing with misconduct by Patent Agents. At the same time, Rule 114 under Chapter XV of the Patents Rules, 2003, mentions about circumstances where the Patent Agents can be disqualified. The name of a Patent Agent can be removed if the Patent Agent is guilty of misconduct in his professional capacity. The Controller is empowered both under the Patent Act and Patent Rules to remove the name of the Patent Agent if it is found that the Agent is guilty of professional misconduct. However, there are no Rules of Conduct for Patent Agents, and the term “misconduct” is not defined either under the Patent Act or the Patent Rules. Thus, there is a need for defining the term ‘misconduct’ with a broader ambit with the evolution of various types of unprofessional behaviour that agents and a proper framework need to be put in place for dealing with professional misconduct by Patent Agents.
The court has referred to the existing frameworks available for Advocates and Chartered Accountants to understand what constitutes ‘professional misconduct’. Regarding Advocates, under section 35 of the Advocates Act, 1961, the professional or other misconduct of an advocate can result in reprimand of the advocate, suspension of the advocate from practice and removal of the advocate from state rolls. The disciplinary powers are vested with the concerned State Bar Council. Further, Appellate remedies are vested with the Bar Council of India under Section 37 and thereafter with Supreme Court under Section 38. Professional misconduct of advocates has been dealt with in various decisions of the Supreme Court. In Noratanmal Chouraria v. M.R. Murli and Another, (2004) 5 SCC 689, the Supreme Court made an effort to determine quantum of punishment and define ‘Misconduct’ in the context of Advocates and observed that a member of the legal profession should maintain professional standards in a dignified manner, and they should abide by the norms of the community.
In context of Charted Accountants, Chartered Accountants Act, 1949 prescribes the scope of professional misconduct in the Second Schedule to the Act. Section 22 read with Schedule II of the Chartered Accountants Act lays down clear guidance as to what constitute misconduct by Chartered Accountants and a proper system has been put in place for dealing with any misconduct.
The Court further has observed that similar to the Patent Rules, under the Trademark Rules, 2017, Rule 151(2)(b) also provides that the Registrar can take action in case of negligence, misconduct or dishonesty committed in professional capacity of Trademark Agents. Thus, the responsibility of Trademark Agents and Patent Agents is governed by the Trademarks Act 1999 and the Patent Act, 1970. Hence, there needs to be proper mechanism and framework that should be put in place for taking action against Trademark and Patent Agents.
The court has further referred regulations from certain other jurisdictions, such as USA, UK, Ireland to create a framework for regulating the conduct of Patent Agents. As per the USPTO Rules of Professional Conduct, an Agent also falls within the ambit of the term Practitioner and the Misconduct has been defined in 11.804 of USPTO Rules of Professional Conduct. Client- Practitioner Relationship also has been explained and what are the duties of the Practitioner towards its Clients as per sub part D of USPTO Rules (§ 11.101 - § 11.104). The court has highlighted reasonable ‘Diligence’, ‘Promptness’ and reasonable ‘Communication’ to the client from the USPTO Rules.
Further in the UK, Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons were made under Section 275 A of the Copyright Designs and Patents Act 1988 and under Section 83 A of the Legal Trade Marks Act, 1994. Similarly, in the Irish Patents Act, 1992, Part X of the Act specifically defines who all fall in the definition of Patent Agent, their qualifications, removal from register or suspension of registration of Patent Agents and rules relating thereto. From the above statutes, Rules and Codes shows, the court observed that conduct of Patent Agents and similar professionals is accorded enormous significance and detailed provisions exist to regulate their conduct.
With regard to the CGPDTM’s stand, an affidavit was filed saying that under Section 131(2) of the Patent Act, 1970, if there is any misconduct in professional capacity action can be taken for removal of the name of such patent agent from the register. The court however observed that Section 131 of the Patents Act, 1970 merely describes situations wherein the Controller has power to refuse to deal with certain agents and there is no specific framework provided for the manner in which complaints can be entertained and the timelines within which action can be taken, if required.
The court, upon perusing the code of conduct for other professionals, has stated that there is an imminent need for a proper system/ framework to be established for regulating the conduct of Patent Agents.
The court has further observed that a Code of Conduct must be prescribed separately for the different levels of duties of patent agents:
duties to their clients/applicants of patents;
duties towards the IP office;
duty to society in general; and
duty to Courts if and when they appear and exercise the right of audience.
Thus, the court stressed that there is an urgent need for preparing and notifying a proper code of conduct for trade mark/patent agents, for providing a mechanism for lodging of a complaint against a trade mark/patent agent, for prescribing factors that would constitute misconduct, for setting out the procedure of complaint and its dealings, and for prescribing penalties and punishments.
It is also to be noted that Partnerships, IP law firms, and even general practice law firms employing patent agents also should be borne in mind about the code of conduct of patent agents, since the same is not limited to only individual patent agents.
The court has also defined the misconduct of the patent agents that could include:
“the commission or omission of an act that constitutes a breach of ethical or professional obligations –
wherein such behavior, whether intentional or negligent, contravenes established standards of practice.
If the same causes harm to clients, diminishes their trust, compromises the patent agent’s integrity including failure to uphold the principles of honesty, morality, accountability, and professionalism”
Advertising:
The Intellectual Property Attorneys' Association (IPAA) intervened in the case and submitted the issues related to advertising of legal services, misleading and misrepresentative promotions of IP services by companies, entities including IP professionals along with few advertising representations. IPAA has highlighted relevant provisions from the statues of Patent and Trade Mark for the professional negligence, professional misconduct or dishonesty, committed in his professional capacity and disciplinary proceedings against patent agents and trade mark agents for the misconduct. The court has heavily come on some websites showing representations for applying and for prosecuting trademarks, which are misleading and misrepresentative in nature.
The court has observed that in Bar Council of Maharashtra v. M.V. Dabholkar and Others, (1976) 2 SCC 291, it was observed that soliciting, advertising, scrambling and other obnoxious practices, subtle or clumsy, for betterment of legal profession, will be considered as a taboo. In this case advocates tried to secure clients by means of solicitation, physical fight, undercutting of fees etc.
Though some basic details of the firm, its lawyers and the services offered is usually specified on the website of lawyers and law firms, the representations such as “Get trademark registration in 1 day”, special offers, discounted fees, lowest prices “Get in one day” reveal that deceptive and illusory claims are being made and applicants may fall prey to the same.
Further, the court based on recent trade mark practices, the court has a view that the name of the registered Agent should be mentioned on any offering provided in the internet, so that the promotional material can be linked to the responsible Agents. The court has stated that” “Whenever there is any offering of service for trade mark or patent registration, it should be compulsory for the name of the registered Agent and the registration number to be mentioned so that the promotional material can be linked back to the person who is responsible. Without such safeguards, there is in effect no accountability whatsoever and genuine applicants and their rights may be severely jeopardised.”
The court has further observed that Patent Agents, Trademark Agents and other similar agents can have a website giving contact details and other material relating to their services however the Controller General ought to curb misleading and misrepresentative advertising in the larger interest of the profession and applicant.
In view of the same, the court passed the following directions:
A draft Code of Conduct be prepared to regulate Patent and Trademark Agents and put up by the CGPDTM on its website within two months for stakeholder consultation and to notify the within a period of 6 months, latest by 31st December 2024.
A framework be prepared within the said period, for dealing with complaints against Trademark Agents and Patent Agents.
An ad-hoc Committee be formed, 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 for dealing with the complaints filed against any Trademark or Patent Agent before the office of the CGPDTM. The ad-hoc Committee has to notify the court within two months.
Conclusion:
The court has stressed the necessity for a well-defined code of conduct to ensure Patent Agents uphold professional standards and protect the interests of their clients. The court has also highlighted the importance of accountability and transparency in the IP profession, calling for stringent regulations to address negligence and misconduct. The court has also come heavily on misleading and misrepresentative promotions for IP filings and mandated the name of the registered Agent and the registration number to be mentioned on such promotions to ensure his/her accountability as the Agent. Thus, court has highly concerned on misleading and misrepresentative promotions and advertisement of IP agents while observing to have basic contact details and other material relating to their services in their website not amounting to soliciting to work to their clients. The court has also recommended CGPDTM to take strict actions against IP agents publishing such misleading and misrepresentative advertisements. Thus, Firms and Agents can have a website to publish their basic details and their services, however, should be vigilant when publishing information, particularly regarding misleading or misrepresentative promotions and advertisements. Such practices could constitute professional misconduct and may result in strict action from the CGPDTM.
The court has also highlighted that the code of conduct and the framework may not be interpreted to only applicable to individual IP agents, the Partnerships and Law firms employing IP agents also to be considered. Thus, it mandates the Law firms to keep an eye on their IP agents and their actions not amounting anything to soliciting.
Authors:
Managing Partner
Partner [Patent]
Contact us:
M: +91 89282 74062
L: +91 22 28313243
Website:
Comments