'Patentee Can't Be Made To Suffer For Negligence Of Agent': Orissa High Court Allows Restoration Of Expired Patent Beyond Deadline

The Orissa High Court has recently allowed a patentee to file application before the Controller for restoration of patent, even after expiry of the permissible restoration window of eighteen months, which ceased to have effect due to non-payment of renewal fees by the patent agent.While granting relief, the Bench of Justice Bibhu Prasad Routray held that a patentee cannot be made to suffer for the sole negligence of the patent agent, and thus held – “In the given facts of the present case, as stated by the Petitioner, the non-payment of renewal fee within the time due to the fault of athourised [sic] agent is found convinced taking note of the averments made in the writ petition… no difficulty is seen by this Court for considering the application of the Petitioner for restoration of the Patent by the Controller.”The petitioner-M/s. Green Energy Resources, Sambalpur was granted patent in respect of “A Novel Method For Detoxification Of Spent Potlining (SPL) By Controlled Head Treatment” by a certificate dated September 22, 2017. The patent was registered in favour of the petitioner and undisputedly, it remained in force till September 22, 2021.Noteworthy to mention, Section 53(2) of the Patents Act, 1970 ('the 1970 Act') says that a patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.Further, Section 60 of the Act prescribes that where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under Section 53 or within such period as may be allowed under Section 142(4), the patentee, with the leave of the Controller, may within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.It was the contention of the petitioner that due to negligence of the authorised agent, the renewal fees could not be paid within the statutorily stipulated time and due to the passage of the aforesaid eighteen months, the scope of restoration under Section 60 is also closed now. Therefore, it knocked the doors of the High Court invoking its extraordinary writ jurisdiction.Two main arguments were presented on behalf of the petitioner, i.e. firstly, negligence of the agent, and secondly, difficulty to verify the validity of the patent from the office due to the onset of COVID-19 pandemic.Justice Routray, in order to determine the permissible scope of interference, placed reliance on the decision of the Delhi High Court in Bry-Air Prokon Sagi & Ors. v. Union of India & Anr. (2022) which held that errors/negligence on part of the patent agent without any contributory negligence on the part of the Applicant, has been liberally considered by the Courts, as the consequences of a patent application being abandoned or the lapsing of a patent due to non-deposit of renewal fee are very serious.The Court also referred to the judgment of the Delhi High Court in European Union Represented by the European Commission v. Union of India & Ors. (2022) which held that the mistake of the patent agent would be similar to the mistake of an advocate who may be representing parties in any civil or criminal litigation and as per the settled legal position the litigants ought not to suffer.Therefore, the Court was convinced to grant relief to the petitioner taking into account the negligence of the patent agent for whose fault the renewal fees could not be paid. It also gave benefit of the order of the Supreme Court in Suo Moto W.P.(C) No.3 of 2020 which extended limitation periods considering the extraordinary situation due to the pandemic.Resultantly, the writ petition was allowed and the petitioner was permitted to make application for restoration within a period of thirty days before the concerned authority and in such event, the authority was directed to consider the same in accordance with law within a period of two months from the date of application.Case Title: M/s. Green Energy Resources, Sambalpur v. Union of India & Ors.Case No: W.P.(C) No. 19128 of 2024Date of Judgment: February 12, 2026Counsel for the Petitioner: Mr. P. Parija, AdvocateCounsel for the Respondents: Mr. S.S. Kashyap, Senior Panel CounselCitation: 2026 LiveLaw (Ori) 20Click Here To Read/Download Order

'Patentee Can't Be Made To Suffer For Negligence Of Agent': Orissa High Court Allows Restoration Of Expired Patent Beyond Deadline

Jyoti Prakash Dutta

Tags