Patent And Trademark Agents Do Not Come Within Ambit Of BCI Or Advocates Act, Regulatory Authority Need Of The Hour: Delhi High Court

Nupur Thapliyal

7 Sep 2023 1:41 PM GMT

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  • Patent And Trademark Agents Do Not Come Within Ambit Of BCI Or Advocates Act, Regulatory Authority Need Of The Hour: Delhi High Court

    The Delhi High Court has observed that patent and trademark agents do not come within the ambit of the Bar Council of India or the Advocates’ Act, 1961. Justice Prathiba M Singh added that there is no supervisory or regulatory authority over trademark and patent agents which appears to be the 'need of the hour'. The bench thus sought to know the manner in which the Office of Controller...

    The Delhi High Court has observed that patent and trademark agents do not come within the ambit of the Bar Council of India or the Advocates’ Act, 1961. Justice Prathiba M Singh added that there is no supervisory or regulatory authority over trademark and patent agents which appears to be the 'need of the hour'. 

    The bench thus sought to know the manner in which the Office of Controller General of Patents, Designs & Trade Marks intends to regulate or supervise the functioning of trademark and patent agents.

    The court observed that such agents have a huge responsibility of applying, registering and maintaining trademarks and patents and also to file their pleadings and attend to the matters diligently.

    Noting that Indian IP Office has seen a steady increase in filing of trademark and patent applications over the last five years, the court said,

    In order to be able to file any patent and qualify as a patent agent, the person would have to fulfil the eligibility criteria prescribed under the Act and Rules, as also take an examination and clear the same. Such patent agents do not come within the ambit of the Bar Council of India or the Advocates’ Act, 1961.

    Justice Singh added, “There are repeated cases wherein litigants have raised allegations against such Trade Marks Agents and Patent Agents and apart from reprimand from courts, there are no other consequences that visit them.

    Justice Singh passed the order in a plea moved by one Saurav Chaudhary challenging the abandonment of his patent application titled “Blind-Stitch Sewing Machine and Method of Blind Stitching”. He sought restoration of the patent application.

    It was Chaudhary’s case that the patent application was filed in August, 2019, and a request for examination was filed in February, 2022. The first examination report was issued on April 29 last year with a direction by the Patent Office that the response should be filed within six months.

    He contended that despite repeated follow ups, he did not receive any reply from the patent agent. After finding out that the application was deemed to be abandoned due to non-filing of the response to the FER, chaudhary engaged a new patent agent and filed a request for restoring the patent application in January.

    The court had issued notice to the patent agent who possessed a Masters of Pharmacy (M. Pharma) degree and was also an enrolled lawyer. He submitted that apart from him, his firm has one more partner and that two more lawyers were working in his firm. He also said that the firm conducted litigation before district courts in IPR matters.

    On court’s query as to why so many emails of Chaudhary went un-replied, he said that he would need to verify his email account and then respond.

    Justice Singh directed the patent agent to file an affidavit explaining the position leading up to the abandonment of the application and to also disclose the correspondence with Chaudhary after the filing of patent application.

    Let Ms. Nidhi Raman, ld. CGSC obtain instructions as to the manner in which the office of the CGPDTM intends to regulate or supervise the functioning of trademark agents and patent agents and a report be filed in this regard by the next date of hearing,” the court ordered.

    The matter will now be heard on November 09.

    Case Title: SAURAV CHAUDHARY v. UNION OF INDIA & ANR.

    Citation: 2023 LiveLaw (Del) 810

    Click Here To Read Order

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