WRIT PETITION None

IN THE HIGH COURT OF DELHI AT NEW DELHI

%Date of decision: 07[th]March, 2025

+W.P.(C)-IPD 15/2025 & CM 49-51/2025

CIENA CORPORATION.....PetitionerThrough:Mr. Samar Bansal, Mr. K. RigvedPrasad,Mr.AmanBajaj,Mr.KaustubhChaturvediandMr. Vedant Kapur, AdvocatesThrough:Mr. Samar Bansal, Mr. K. RigvedPrasad,Mr.AmanBajaj,Mr.KaustubhChaturvediandMr. Vedant Kapur, Advocates

versus

UNION OF INDIA & ORS......Respondents

Through:Mr.GauravBarathi,SPCwithMs.MamtaTiwari,G.P.withMs. Rasya Rawal, Advocate for UOI& CGPDT, R-1 & R-2Ms.MamtaTiwari,G.P.withMs. Rasya Rawal, Advocate for UOI& CGPDT, R-1 & R-2

CORAM:HON'BLE MR. JUSTICE AMIT BANSAL

AMIT BANSAL, J. (Oral)

1.This writ petition has been filed seeking setting aside of the letterdated 16[th]February, 2024, passed by respondent No.2 in the PCT NationalPhase Application No.202017034476, whereby, the patent application filedon behalf of the petitioner has been deemed to be abandoned (hereinafter“Abandonment Letter”).

2.In view of the limited issue involved in the present petition, with theconsent of the parties, the petition is taken up for disposal at this stage itself.

3.Brief facts necessary for deciding the present petition are set outbelow:-

i.The present Indian patent application pertains to ‘ModularNetwork Element Architecture’, new type of modular networkelement invented by the employees of the petitioner in the year 2018.The invention is physical hardware having networking, computingand storage functions, and is in the nature of hybrid between rack-mounted module and line module which is inserted in chassis.

ii.On 23[rd]April, 2018, the petitioner filed the priority PatentApplications bearing no.15/959,746, 15/959,820 and 15/959/869 inthe United States Patent and Trademark Office (USPTO).

iii.On 9[th]April, 2019, petitioner filed the international applicationno.PCT/US2019/026489beforetheWorldIntellectualPropertyOrganisation(WIPO)seekinginternationalpublicationoftheinvention under the Patent Cooperation Treaty (PCT), after whichWIPO published the invention on 31[st]October, 2019.

iv.The national phase application in respect of said invention wasfiled on 11[th]August, 2020 by the petitioner before the Indian PatentOffice, New Delhi.

v.On 15[th]April, 2022, relevant forms prescribed under IndianPatent Rules, 2003 were filed by the Indian Patent Agent of thepetitioner requesting for examination of the subject patent applicationand also seeking amendment of the patent application.

vi.On 1[st]September, 2022, the first examination report (FER) wasissued by the patent office to the patent agent of the petitioner.However, the patent agent of the petitioner did not inform the

petitioner about the said request for examination of the FER andhence, the reply to the aforesaid FER could not be filed by thepetitioner.

4.On 16[th]February, 2024, the Abandonment Letter was passed by therespondent no.2 treating the patent application filed on behalf of thepetitioner to be abandoned in view of the fact that the petitioner failed to filea response to the FER within the prescribed statutory time period. Therelevant extracts from the Abandonment Letter are set out below:-

“I am to invite reference to the above mentioned Application, In thisregard it has been observed from the records available with this office thatyou have not submitted the reply to First Examination Report (FER)issued by this Office vide letter No - 202017034476, Dated - 01 Sep2022.You have failed to put the above mentioned application in order forgrant within the prescribed period as stipulated in Section 21(1) of ThePatents Act 1970 which expired on 01 Mar 2023.In view of the abovecircumstances, the said application is treated as deemed to have beenabandoned under the provisions of section 21(1) of the said Act.”

5.It is stated that the petitioner came to know about the AbandonmentLetter being passed only on 23[rd]January, 2025, when the petitioner carriedout due diligence through third party.

6.Immediately thereafter, the petitioner contacted its patent agent andinquired about the subject patent application. The patent agent admitted hismistake and informed the petitioner that the FER was inadvertently omittedfrom being docketed in the system of his firm and hence, the same could notbe communicated to the petitioner. In this regard, the petitioner has placedon record an affidavit of the patent agent dated 25[th]February, 2025.

7.Mr. Bansal, counsel appearing on behalf of the petitioner submits thatthe petitioner cannot be penalised on account of bona fide mistakecommitted on the part of the patent agent. He relies upon judgment of

Coordinate Bench of this Court in European Union Represented by theEuropean Commission v. Union of India and Ors., 2022 SCC OnLine Del1793.

8.Mr. Gaurav Barathi, counsel appearing on behalf of the respondentsubmits that there has been an inordinate delay in filing the present petition.The FER was issued in September 2022, and was duly served on the patentagent of the petitioner; the Abandonment Letter was issued on 16[th]February,2024 and the present petition has been filed only on 25[th]February, 2025.

9.I have heard the counsel for the parties.

10.It is settled position of law that party cannot suffer on account ofthe mistake of his lawyer, or in the present case, his patent agent. Counselfor the petitioner has correctly relied on the judgment in EuropeanCommission v. Union of India (supra). The relevant observations from theaforesaid judgment are set out below:-

“58.Thedecisionsdiscussedabovewouldshowthatinadvertent errors or errors of patent agents have beenliberally considered by the Court. The consequences of patentbeing abandoned is quite extreme i.e., the Applicant isdeprived of exclusivity for the invention completely. In theopinion of the Court, such consequence ought not to visit theapplicant for no fault of the Applicant. In the facts of thesecases, the Applicant had no intention to abandon theapplication. It has taken all measures possible to prosecutethese applications. The Applicant was conscious of the factthat the patent may be maturing for examination and took theinitiative to keep in touch with the patent agent from the veryinception.

59. Therefore, the question that arises is whether this Courtwhile exercising writ jurisdiction under Article 226 and 227ought to condone the delay and restore the patent applications

of the Petitioner.

60. The Court is convinced that there was no intention toabandon on behalf of the Petitioner, instead, the Petitioner'sactionsindicatethattheywereactivelypursuingtheapplication. Moreover, the judicial opinion in respect ofresponses to FER or other deadlines seems to suggest that ifthe Applicant did not have an intention to abandon and if theCourt is convinced that there was mistake of the patent agentand the Applicant is able to establish full diligence, the courtought to be liberal in its approach.61. In the opinion of this Court, the mistake of the patent agentwould be similar to the mistake of an advocate who may berepresenting parties in any civil or criminal litigation. Insofarasanymistakecommittedbycounsels/advocatesareconcerned, the settled legal position is that the litigants oughtnot to suffer, as has been laid down by the Supreme Court in anumber of decisions including Smt. Lachi Tewari v. Directorof Land Records, 1984 Supp SCC 431; Rafiq v. Munshilal,(1981) 2 SCC 788; Mangi Lal v. State of M.P., (1994) 4 SCC564andTheSecretary,DepartmentofHorticulture,Chandigarh v. Raghu Raj, (2008) 13 SCC 395 : AIR 2009 SC514.

62. In view of the fact that no fault can be attributed to theApplicant, this Court is of the opinion that the Applicant oughtnot to be made to suffer. However, there is word of cautionthat this Court would like to add in this regard. The intentionof the Legislature in Rule 138 of the Rules cannot be ignoredby the Controller, nor can one ignore the express language ofSection21(1)oftheAct,whichmandatesadeemedabandonment in case of non-compliance with the requirementsimposed under the Act. It is only in extraordinary cases, whileexercising writ jurisdiction, that the Court may consider beingflexible, and this would depend on the facts of each case as towhether condonation ought to be given at all.”

11.The ratio of the aforesaid judgment is fully applicable in the facts ofthe present case. In the present case, the petitioner has filed the same patentapplication in several countries including the Indian application within theprescribed time limits through the PCT route. The petitioner has obtainedthe registrations in respect of the same patent in various other countries. Thepetitioner also filed the request for examination of the patent application inthe present case within the prescribed time period.

12.The patent agent of the petitioner has admitted its mistake in notcommunicating the FER to the petitioner and therefore, the reply to the samecould not be filed within the prescribed time limit. The aforesaid fact hasbeen admitted by the patent agent on affidavit, which has been placed onrecord by the petitioner.

13.Rights granted in favour of patentee are valuable rights and therewould be drastic consequences if the said rights are defeated by aninadvertent mistake of the patent agent of the applicant.

14.The petitioner in the present case had no intention to abandon thesubject application. It has taken all measures to prosecute this application.Immediately after coming to know about the Abandonment Letter havingbeen passed, the petitioner had promptly filed the present petition.

15.In view of the discussion above, this Court is of the opinion that thepetitioner/applicant cannot be made to suffer on account of bona fidemistake committed by its patent agent. Accordingly, the present writ petitionis disposed of with the following directions:-

i. The Abandonment Letter dated 16[th]February, 2024 is set aside.

ii. The subject patent application filed by the petitioner would standrestored to its original number.restored to its original number.

iii. One final opportunity is given to the petitioner to file reply to FER

dated 1[st]September 2022 within four weeks from today.16.The Registry is directed to send copy of the present order to theoffice of the Controller General of Patents, Designs and Trade Marks at thee-mail ‘[REDACTED]’ for compliance.

MARCH 07, 2024ds

AMIT BANSAL, J