Safiya Malik

The High Court of Orissa, Single Bench of Justice Bibhu Prasad Routray, recently allowed a patentee to submit a restoration application before the Patent Controller even after the statutory eighteen-month restoration window had lapsed. The patent in question had ceased to have effect due to non-payment of renewal fees by the authorized patent agent, and the patentee discovered this lapse only years later. The Court held that a patentee cannot be made to suffer for the exclusive negligence of the patent agent, drawing an analogy to the settled principle that litigants ought not to be prejudiced by the mistakes of their legal representatives. The Bench further considered that the patent's expiry coincided with the Covid-19 pandemic period, extending benefit accordingly, and directed the competent authority to consider the restoration application within two months of its filing.

The petitioner, M/s. Green Energy Resources, Sambalpur, was granted Patent No.343974 on 22nd September 2017 in respect of “a Novel Method For Detoxification Of Spent Potlining (SPL) By Controlled Head Treatment.” The patent remained in effect until 22nd September 2021, after which it ceased owing to failure to deposit renewal fees.

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The petitioner approached the High Court seeking restoration of the patent. It was contended that the failure to pay renewal fees within the prescribed period under Section 60(1) of the Patents Act, 1970 occurred due to negligence of the authorised agent appointed for handling such matters. The petitioner submitted that it was under the impression that renewal fees were being regularly deposited and came to know only in June 2024 that the patent had ceased due to non-payment. It was further submitted that the date of cessation fell within the COVID-19 pandemic period, creating obstacles in verifying the patent status.

The respondent, represented by the Senior Panel Counsel, disputed that any application for restoration had been received but agreed that after expiry of the prescribed period, submission through the portal was not possible. The statutory provisions considered included Sections 53, 60(1), 60(3), and 142(4) of the Patents Act, 1970.

The Court recorded that Section 60(1) “authoriz[es] patentee or his legal representative to apply for restoration of the Patent within a period of eighteen months from the date of which the Patent was ceased to have effect.” It further noted that Sub-section (3) “postulates that an application for restoration, as per Sub-section 1, shall fully set out the circumstances which led to the failure to pay the prescribed fee.”

Referring to the Delhi High Court decision in Bry-Air Prokon Sagi, the Court quoted “It is a settled position of law 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, where the applicant loses his right of claiming exclusivity to an invention.”

It further quoted “Looking at the extraordinary facts and circumstances of this case, as aforementioned, in my view, it would be a travesty of justice if on technical grounds the Patent is allowed to lapse.”

From the decision in European Union Represented by the European Commission, the Court recorded “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.”

It also quoted “The litigants ought not to suffer, as has been laid down by the Supreme Court in a number of decisions including Smt. Lachi Tewari v. Director of Land Records, 1984 Supp SCC 431; Rafiq v. Munshilal, (1981) 2 SCC 788; Mangi Lal v. State of M.P., (1994) 4 SCC 564 and The Secretary, Department of Horticulture, Chandigarh v. Raghu Raj, (2008) 13 SCC 395 : AIR 2009 SC 514.”

On the facts of the present case, the Court recorded that “the non-payment of renewal fee within the time due to the fault of athourised agent is found convinced taking note of the averments made in the writ petition and secondly, it is admitted that the date of expiry of the Patent on 22nd September 2021 was within the Covid-19 Pandemic period.”

The Court further observed that “the direction of the Hon’ble Supreme Court in S.M.W.P(C) No.3 of 2020 having been taken note to benefit of the petitioner, no difficulty is seen by this Court for considering the application of the Petitioner for restoration of the Patent by the Controller.”

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The Court directed: “In the result, the writ petition is allowed and the Petitioner is permitted to make his application for restoration within a period of thirty days from today before the concerned authority and in such event the authority shall consider the same in accordance with law within a period of two months from the date of application.”

Advocates Representing the Parties:

For the Petitioners: Mr. P. Parija, Advocate
For the Respondents: Mr. S. S. Kashyap, Senior Panel Counsel

Case Title: M/s. Green Energy Resources, Sambalpur v. Union of India and Others

Neutral Citation: NA

Case Number: W.P.(C) No.19128 of 2024

Bench: Justice Bibhu Prasad Routray