Prepare And Notify Code Of Conduct To Regulate Patent And Trademark Agents Within 6 Months: Delhi High Court To CGPDTM

The Delhi High Court has asked the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) to prepare a draft Code of Conduct to regulate Patent and Trademark Agents and to put it on its website within two months for stakeholder consultation.

Justice Prathiba M Singh directed that the Code of Conduct be then notified within six months and latest by December 31.

“Within the said period, a framework be also put in place for dealing with complaints against Trademark Agents and Patent Agents, until then if any complaint is filed against any Trademark or Patent Agent before the office of the CGPDTM the same shall be considered and decided by ad-hoc Committee 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. The ad-hoc Committee be notified within two months,” the court directed.

It observed whenever there is any offering of service for a 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.

The court said that without such safeguards, there is in effect no accountability whatsoever and genuine applicants and their rights may be severely jeopardised.

“While it may not be illegal for Patent Agents, Trademark Agents and other similar agents to have a website giving contact details and other material relating to their services - the pamphlets and messages as captured above have a larger bearing on clients and applicants who may be availing services. The Controller General ought to be able to curb such misleading and misrepresentative advertising in the larger interest of the profession and applicant,” it said.

On regulation of Patent Agents, the court said that the restrictions currently imposed on them as to the persons with whom they can enter into partnerships may also have to be relooked.

“Most law firms dealing with intellectual property issues and even general practice law firms have lawyers who work under them in their IP departments. Such firms also employ Patent Agents. Individual Advocates and Patent Agents also come together to form partnerships to provide comprehensive IP services. These practical realities would also have to be borne in mind while dealing with regulation of the Patent Agents,” it said.

Justice Singh added that there is an urgent need for preparing and notifying a proper code of conduct for trademark or Patent Agents, providing a mechanism for lodging a complaint against such agents, prescribing factors that would constitute misconduct, setting out the manner in which the complaint is to be dealt with and prescribing penalties that can be imposed.

The court was dealing with a plea moved by one Saurav Chaudhary against the abandonment of the patent application titled “Blind-Stitch Sewing Machine and Method of Blind Stitching”. He sought restoration of the patent application.

The court noted that the firm engaged by Chaudhary failed to show diligence in communicating the issuance of the First Examination Report after the filing of the Request for Examination to him. It further said that Chaudhary was also not informed that the Reply to the FER was to be filed.

The court set aside the abandonment order and ordered that its reflection be made on the website by the Office of CGPDTM within two weeks.

“The Patent Office shall accept the physical/online reply to the FER which shall be filed within four weeks after the reflection of the said abandonment order on the website and, thereafter, proceed with the patent application of the Petitioner in accordance with law,” the court said while disposing of the plea.

Counsel for Petitioner: Mr Neeraj Grover, Ms. Meenakshi Ogra, Mr Tarun Khurana Adv. Mr Samrat S. Kang, Mr. Rishi Vohra Adv. Mr. Hemant Kataria, Ms. Chhavi Pandey & Mr. Amarjeet Kumar, Advs

Counsel for Respondents: Ms. Nidhi Raman, CGSC with Mr. Zubin Singh, Adv. for UOI; Mr. Chander M Lall, Sr. Adv. with Ms. Nancy Roy, Ms. Archana Sachdeva, Mr. Sushant M. Singh, Ms. Kruttika Vijay, Mr. Raghav Malik, Ms. Ananya Chug & Mr. Sushant Singh, Adv. for Intervenor IPAA

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

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