Delhi High Court Highlights the Importance of Intent in Patent Abandonment Due to Negligence of the Representative

Today, we will explore an interesting “patent abandonment” litigation case where the patent applicant and plaintiff are no other than the European Commission. In 2012 and 2013, the European Union filed two Indian patent applications via a subsidiary EU IP firm. For such filings, the firm had concluded a contract with an Indian patent attorney supervising the process.

In 2017, the EU IP firm transferred the rights of the two abovementioned patent applications to a second EU IP firm, an assignment which was duly notified to the patent agent. Since early 2018 the new patent holder has made multiple attempts to contact the patent attorney for an update and any information regarding First Examination Reports (FER) from the national patent office.

After multiple attempts without any response from the patent attorney, the EU firm decided to change the representative. Via the second patent attorney, in 2019, the Commission found out that the previous patent attorney had not only not responded to their communications but had not followed up on the FERs submitted by the Indian patent office in April and June 2018 either. Thus, the patent applications had been deemed abandoned.

The Commission immediately raised the case to the Delhi High Court in two separate writ petitions. After that, the Court ruled that in such instances in which apparent negligence is exclusively attributable to the attorney and having the applicant actively pursue the continuation of such patent applications, the plaintiff should not suffer the negative consequences. Hence, the Delhi High Court issued an order to restore both patent applications within six months.