Orissa High Court: In writ petitions under Article 226 of the Constitution, dealing with Patent restoration, a Single Judge Bench of B.P. Routray, J., held that a patentee cannot be made to suffer for the negligence of its authorized agent. The Court underscored that the expiry of the patent during the Covid-19 pandemic period and the agent’s failure to pay renewal fees justified restoration beyond the statutory eighteen-month window under Section 60, Patents Act, 1970 (‘Patents Act’). Observing that the Patents Act is a beneficial legislation, the Court directed the Controller to accept the restoration application and allowed the writ petition.
Background of the Patent Restoration Case
The matter arose from the cessation of a patent, granted on 22-09-2017 for “A Novel Method for Detoxification of Spent Potlining (‘SPL’) by Controlled Heat Treatment.” The patent remained valid until 22-09-2021, when it ceased to have effect owing to non-payment of renewal fees. However, under Section 53(2), Patents Act, a patent ceases if renewal fees are not paid within the prescribed period, while Section 60 of the Patents Act authorises restoration within eighteen months of expiry with leave of the Controller. The petitioner explained that the statutory window for restoration had closed, as the portal did not permit submission of the application after expiry of the prescribed period, compelling it to approach the Court.
It was contended that the failure to deposit renewal fees was solely due to the negligence of the authorised agent appointed for the purpose. The petitioner, relying upon the agent, was under the impression that the fees had been deposited from time to time, but discovered in June 2024 that the patent had ceased to have effect. A further ground was taken that the expiry date of 22-09-2021 fell within the Covid-19 pandemic period, when obstacles existed in verifying the patent status physically at the Controller’s office.
On behalf of the Controller, it was disputed that the petitioner’s restoration application was ever received, though it was admitted that the applicant had no option to submit a hard copy once the portal closed.
The central issue before the Court, therefore, was whether at such belated stage the petitioner could be permitted to apply for restoration of the patent that had expired since 22-09-2021.
Analysis and Decision of Orissa High Court
The Court referred to the Delhi High Court’s observations in Bry-Air Prokon Sagl v. Union of India, 2022 SCC OnLine Del 5197, wherein it was held that errors or negligence on the part of the patent agent, without any contributory negligence on the part of the applicant, have 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, where the applicant loses his right of claiming exclusivity to an invention.
The Court further noted that in European Union v. Union of India, 2022 SCC OnLine Del 1793, it was explained 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. Insofar as any mistake committed by counsels or advocates is concerned, the settled legal position is that the litigants ought not to suffer.
The Court also referred to the 161st Report submitted by the Department Related Parliamentary Standing Committee on Commerce on 23-07-2021, titled “Review of the Intellectual Property Rights Regime in India”, where it was observed that the abandoning of patents, without allowing hearing or petition, may demoralize and discourage patentees in the country from filing patents. It was further observed that certain flexibility should be incorporated in the Act to allow minor errors and lapses, so as to prevent outright rejection of patents being filed. Hence, a revised petition with penalty or fee may be permitted under the Act for minor or bona fide mistakes committed in filed patents.
The Court found convinced that the non-payment of renewal fee within the time was due to the fault of the authorised agent, taking note of the averments made in the writ petition. It was admitted that the date of expiry of the patent on 22-09-2021 was within the Covid-19 pandemic period. Further, the directions of the Supreme Court in Cognizance for Extension of Limitation, In re, (2020) 19 SCC 10, having been taken note for the benefit of the petitioner, no difficulty was seen by this Court in considering the application of the petitioner for restoration of the patent by the Controller.
In the result, the writ petition was allowed, and the petitioner was permitted to make the application for restoration of expired patent within thirty days, and the authority was directed to consider the same in accordance with law within two months from the date of application.
[Green Energy Resources v. Union of India, W.P.(C) No. 19128 of 2024, decided on 12-02-2026]
Advocates who appeared in this case :
For the Petitioner: P. Parija, Advocate
For the Respondents: S.S. Kashyap, Senior Panel Counsel