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The Delhi High Court recently in Saurav Chaudhary Vs Union Of India & Anr. underscored that there is a need to supervise or govern patent and trademark agents. Interestingly, the same has also been raised earlier by Prashant, Aparajita, and Praharsh. This post discusses the case and argues that there already exists a mechanism under the Patent and trademark laws that govern and supervise such agents. Plus, I argue that the liability of such an agent should be analogized with legal practitioners for which we already have sound jurisprudence and laws regarding professional conduct.
First thing first, let’s unfold the case: The case involves a writ petition challenging the abandonment of a patent application and praying for its restoration. Here, the background is that the Petitioner hired Mr. Naveen Chaklan of M/s Delhi Intellectual Property LLP to deal with his patent application. Per Petitioner’s case, Mr. Chaklan failed to submit the response to the First Examination Report (FER) despite being sent several reminders that Ms. Chaklan never responded. Consequently, the Petitioner came to know that his application was deemed to be abandoned due to non-filing of the response to the FER. An agent was engaged thereafter to file a request for restoring the patent application. About the non-response, Mr. Chaklan said he would need to verify the email and other correspondence and then he’d respond.
Noting the lack of any supervisory or governing body for trademark and patent agents, the Court instructed Ms. Nidhi Raman, the learned Central Government Standing Counsel, to seek guidance from the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the apposite manner of regulating such agents and submit them in the next hearing. Underscoring the responsibility of such agents regarding adhering to deadlines and submitting pleadings diligently under the Act and Rules, it remarked that agents do not come within the ambit of the Bar Council of India or the Advocates’ Act, of 1961.
Existing Mechanism for Governance and Supervision of Patent and Trademark Agents
A few questions stand out unanswered, after reading the case — whether the Court meant a separate “body” (like a new institution?) to supervise or regulate the conduct of such agents; or whether it meant the enactment of legal rules or guidelines for the said purpose. In any case, what exactly will this body or rules cover – the agents’ professional misconduct? If so, what will be the liability of such agents – damages, suspension, or cancellation of registration? While there have been a few instances of such negligence, whether that is representative of a larger problem that requires a whole new set of bodies or regulations, is a question that demands more scrutiny.
Fortunately, legislative solutions for this already exist, on paper at least. For, if one is responsible for doing something under the law, one will owe a liability for failing those responsibilities. Chapter XV of the Patent Rules, 2003, CHAPTER XXI of the Patents Act, 1970, PART IV of Trademark Rules, 2017 specifically deals with patent and trademark agents laying down a liability when the agents fail to do their responsibility.
I refer to Section 130 of the Patent Act l, Rule 116 of Patent Rules, and Rule 151 of the Trademark Rules, 2017. Section 130 and Rule 116 empower the Controller to remove the name of a patent agent from the register if s/he is found to be guilty of professional misconduct. Rule 151 authorizes the Registrar to remove the registered trademarks agent’s name from the register “whom the Registrar has declared not to be a fit and proper person to remain in the Register by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity.”
Here, it won’t be that difficult to prove that negligence such as the present case where an agent does not meet deadlines even after being reminded several times resulting in the abandonment of a patent application, is professional misconduct. We have had cases where such acts of the agent were regarded as negligence (see here and here) and as discussed below, negligence is already considered professional misconduct.
Sample this Supreme Court case State Of Punjab vs Ram Singh Ex. Constable, which albeit in a different context provides a useful and applicable explanation of misconduct including negligence. It states that “… the word `misconduct’ though not capable of precise definition, on reflection receives its connotation from the context, the delinquency in its performance and its effect on the discipline and the nature of the duty. It may involve … forbidden act, a transgression of established and definite rule of action or code of conduct but not mere error of judgment, carelessness, or negligence in performance of the duty; the act complained of bears forbidden quality or character.”
I’d go on to argue that the yardstick of professional misconduct of such agents should in no way be less than that of legal practitioners, whose relationship with their clients can arguably be analogized with that of patent and trademark agents. For this, reliance can be placed on the DHC’s The European Union Represented by the European Commission vs. Union of India, where Justice Pratibha M. Singh, dealing with similar facts including agent’s negligence, noted 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”.
By this analogy, it is arguable that the way legal practitioners are liable for their professional negligence (e.g., under Section 5 of the Legal Practitioner’s (Fees) Act, 1925), the Patent and trademark agents can also be made liable for their negligence and liable to be disqualified. Illustratively, in Manjit Kaur v. Deol Bus Service Ltd, the Punjab-Haryana High Court noted that “Indeed, there is a duty of care that a counsel owes to his party which clearly extends to ensuring that the interests of his party are not in any manner hurt by his doing of what is required to be done or omitting to do what is required to and necessary in the discharge of his duty as a counsel.” Similarly, Supreme Court’s Rafiq & Anr v. Munshilal & Anr, whose comment on the lawyer-client relationship as having unequal bargaining positions aptly applies to patent/trademark agent-applicant relationship with a similar knowledge and expertise gap also supports the analogous agency argument. The Court noted that “… The problem that agitates us is whether it is proper that the party should suffer for the inaction, deliberate omission, or misdemeanour of his agent. The answer obviously is in the negative …”
This “patent/trademark agent-legal practitioner” analogy is important to note because both Patent and trademark Rules particularly problematize professional misconduct by legal practitioners and bar them from being registered as such agents.
Suggestions and Conclusion
Given these reasons, a patent or trademark agent whose negligence harms their clients is liable to lose their registration and can be barred from appearing before relevant authorities. One may ask: How are these provisions currently effectuated? As in, does it need someone to make a complaint/request to the controller/registrar or can the controller/registrar take a suo moto action? The answer is not very clear, at least to me, from the provisions’ language. Although it appears that a suo motu action can be taken after giving such agents an opportunity to be heard, I couldn’t find an authority for this. Please feel free to supply one to support or rebut my claim. However, I found one case (though unrelated to negligence or misconduct), where acting upon a complaint, the Controller removed the name of an agent (Here’s the order). Though his registration was later restored.
It is important to underscore the possibility of a communication gap between agents and clients, and other unknown possibilities that may result in an agent’s failure to fulfill her responsibilities. Given that, an instant cancellation of an agent’s registration may be regarded as disproportionate and undesirable. To account for that, a system may be designed to inform the controller/registrar about the incident of professional misconduct and make a record of it. Only after a specific number of incidents by the same person or entity, registration would be (temporarily or permanently?) canceled. One way to do this can be by transmitting a Court order (where an agent is proven guilty) to the patent or trademark office along with directions to record the name and details of the agent. Until such a system is set up, a notification/ intimation approach (e.g., as done in the RTI Act) can be used by the patent or trademark office to clarify the extant liability and avoid/minimize such litigations.
See this relevant, though paywalled paper on liability of patent agents in English Courts by Kevin LaRoche & Johanne Asselin, and WIPO’s study on the Client-Patent Advisor Privilege. For SpicyIP’s coverage of the issues related to patent agents, see here.
Thanks to Swaraj Barooah for his valuable input on the draft.