Background of the Case:
The case at hand involves Bry-Air (Asia) Pvt. Ltd., which filed a writ petition against the Union of India and other respondents, challenging the status of their patent application no. 4154/DEL/2015. This application had been deemed to have been withdrawn by the Indian Patent Office (IPO) under Section 11B(4) of the Patents Act, 1970. The specific reason for the withdrawal was the failure to file a Request for Examination (RFE) within the statutory timeline as mandated by the Act.

Under Section 11B(4), if the applicant does not file the RFE within the prescribed period of 48 months from the priority date of the patent application, the application is considered "deemed to be withdrawn." In this case, Bry-Air contended that the non-filing of FORM 18, which is the RFE, was not due to their own neglect or intent to abandon the application but was solely the result of the negligence of their former Patent Agent.

Bry-Air argued that they had no intention of abandoning their patent rights and that the fault lay with the Patent Agent, who failed to meet the statutory deadlines. As such, they sought the court's intervention to quash the status of "Deemed to be withdrawn" and restore their patent application to its original position, allowing them the opportunity to file FORM 18 and proceed with the examination process.

Issue of the Case:

• Should the patent application be restored despite the failure to file FORM 18 within the statutory time limit?
• To what extent can the negligence of a Patent Agent excuse an applicant from the consequences of deemed withdrawal under Section 11B(4)?
• Does the Applicant's intent to pursue the patent, as opposed to abandoning it, influence the court's decision to restore the application?

Contentions of the Parties:

Bry-Air's Contentions:

Bry-Air asserted that they were fully committed to following the statutory requirements to secure their patent. Their primary argument was that the failure to file FORM 18 was entirely due to the negligence of their erstwhile Patent Agent, who failed to act in time. Bry-Air claimed that they had no fault in the matter and that they should not be penalized for the failure of their Patent Agent, particularly since they had taken swift action upon realizing the error.

• No Intent to Abandon: Bry-Air emphasized that they had always intended to pursue the patent application and had no intention of abandoning their rights to the invention. The mere failure to file FORM 18 due to the Patent Agent's neglect should not be taken as evidence of abandonment.
   
• No Contributory Negligence: The Applicant (Bry-Air) maintained that they themselves were not negligent. They argued that the sole responsibility for the failure to file FORM 18 lay with the Patent Agent, and the Applicant had no contributory role in this lapse.
   
• Restoration of Rights: Bry-Air sought the restoration of the patent application to its original position and requested the court to allow them to file FORM 18 so the examination of their patent could proceed. They contended that the severe consequences of losing their patent rights, due to the Patent Agent's negligence, were disproportionate to the error committed.

Union of India's Likely Contentions:

Although the specific contentions of the respondents (Union of India and the Indian Patent Office) are not detailed, it is typical in such cases for the government to argue the following points:

• Statutory Deadlines Are Mandatory: The respondents would likely argue that the timelines for filing the RFE under Section 11B(4) of the Patents Act are mandatory and that failure to meet these timelines results in the application being automatically deemed withdrawn. They would contend that the law provides little room for deviation from these statutory requirements.
   
• Applicant's Responsibility: The respondents might emphasize that it is ultimately the responsibility of the patent applicant to ensure compliance with all statutory requirements. Negligence on the part of a Patent Agent should not relieve the applicant from the consequences of non-compliance with legal obligations.

Issues Dealt with by the Court:

• Negligence of the Patent Agent vs. Responsibility of the Applicant: Should the court distinguish between the negligence of a Patent Agent and the actions of the applicant? Specifically, can the applicant be absolved of the consequences of their agent's failure to file the RFE on time?
   
• Applicant's Intent to Pursue the Patent: Should the intent of the applicant to pursue their patent rights be considered when determining whether the application should be restored? In other words, can the applicant's clear intent to continue the patent process override the procedural lapse caused by the agent?
   
• Extraordinary Circumstances and Judicial Discretion: Does the case present extraordinary circumstances where the court may exercise its discretionary powers to provide relief to the applicant, thereby allowing the restoration of the application?

Reasoning and Final Decision:

The court, in its reasoning, underscored the significance of the applicant's intent in cases where a patent application is deemed abandoned or withdrawn. The court noted that abandonment of a patent application is not merely a procedural determination but a question of the applicant's intent. For an application to be considered "abandoned," it must be established that the applicant had the intent to abandon or no longer pursue their patent rights.

• Negligence of the Patent Agent: The court distinguished between the actions of the Patent Agent and the Applicant. It held that if the applicant had no contributory negligence and had intended to pursue their application, they should not be penalized for the agent's negligence. The court acknowledged that it was the Patent Agent's failure to act that led to the non-filing of FORM 18, and there was no fault on the part of Bry-Air.
   
• Intent to Pursue the Patent: The court placed significant emphasis on the clear intent of Bry-Air to continue the patent process. It was evident from the facts that Bry-Air had no intention to abandon their application, and the lapse was solely due to the agent's oversight. The court noted that the loss of patent rights, particularly for a valuable invention, is a severe consequence, and where the applicant demonstrates a clear desire to proceed, courts should exercise discretion judiciously.
   
• Extraordinary Circumstances and Judicial Discretion: The court exercised its extraordinary writ jurisdiction, recognizing the exceptional circumstances of the case. It found that it would be unjust to deny Bry-Air the opportunity to pursue their patent due to their agent's negligence. The court further reasoned that the statutory timelines, while mandatory, should not lead to undue hardship where the applicant's intentions were clear, and the failure was not due to their own actions.

In its final decision, the court allowed Bry-Air's writ petition and quashed the status of "Deemed to be withdrawn" for patent application no. 4154/DEL/2015. The court directed the Indian Patent Office to restore the application to its original position and to allow Bry-Air to file FORM 18, thereby continuing the examination process for the patent.

Conclusion:
This case reinforces the principle that abandonment of a patent should not be presumed based solely on procedural lapses, especially when the applicant demonstrates a clear intent to pursue the patent. The decision highlights the court's willingness to take a more lenient approach in cases where an applicant's rights are jeopardized due to the negligence of a third party, such as a Patent Agent. Furthermore, it underscores the importance of intent in determining whether a patent application should be treated as abandoned or withdrawn. Courts may exercise discretion in extraordinary cases to prevent unjust consequences and protect the rights of patent applicants who have acted in good faith.

Case Citation: BryNAir (Asia) Pvt. Ltd. Vs Union Of India: 26.09.2024: W.P.(C)-IPD 17/2024:Delhi High Court: Saurabh Banerjee, H.J.

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: [email protected], Ph no: 9990389539