Mistake of Patent Agent and Judicial Equity

Introduction

This matter concerns the deemed withdrawal of a patent application under Section 11B of the Patents Act, 1970, arising from a failure to file a request for examination (Form-18) within the statutory time limit. The judgment sheds light on how inadvertent mistakes of patent agents should be treated, the boundaries of statutory rigidity, and the balancing role of writ jurisdiction in preventing prejudice to a diligent patent applicant.

Facts Of The Case

Synertec Pty Ltd, an Australian company, filed a patent application bearing no. 202217030233 in India, relating to a novel system and method for vaporising liquefied natural gas to remove inaccuracies in conventional approaches. The patent filing followed a series of earlier applications in Australia (27 November 2019) and under the Patent Cooperation Treaty (27 November 2020). The appointed Indian patent agent filed the national phase application on 26 May 2022, enclosing the complete specification and drawings. The application was thereafter published under Section 11A of the Patents Act on 9 September 2022.

The crux of the dispute arose when the patent agent emailed the petitioner on 12 October 2022, stating that the deadline for filing the request for examination was 27 November 2024. In reality, the correct statutory deadline was 27 November 2023. Due to this erroneous docketing, Synertec did not file Form-18 before the actual deadline. It was only after an enquiry email by the petitioner on 11 November 2024 that the agent realised the lapse. By this time, the Patent Office database reflected the application status as “deemed to be withdrawn” under Section 11B(4) of the Patents Act.

Key Timeline Summary

Procedural Details

Synertec approached the Delhi High Court by way of a writ petition under Articles 226 and 227 of the Constitution of India seeking restoration of the application to its original status from “deemed to be withdrawn.” Both sides acknowledged that no physical or formal withdrawal order had been issued by the Patent Office; rather, the withdrawal was by operation of law due to failure to file the request for examination within statutory time. The respondents argued that the Controller’s record was accurate and that no administrative error had been committed. The petitioner clarified that the failure was solely attributable to the patent agent’s docketing error and not due to any lack of intent or diligence on its part.

Nature Of The Dispute

The legal dispute was not about the correctness of the statutory framework itself. Section 11B of the Patents Act clearly mandates that a patent application shall be examined only where the applicant or any interested person files a request for examination within the prescribed time. Non-compliance triggers an automatic statutory consequence of deemed withdrawal. The controversy revolved around whether writ jurisdiction could be exercised to restore the patent application in exceptional cases where a diligent applicant suffers due to the inadvertent mistake of its patent agent, without any negligence or intention to abandon.

The petitioner relied on two decisions of the Delhi High Court:

• European Union represented by the European Commission v. Union of India (2022 SCC OnLine Del 1793)
• Bry-Air (Asia) Pvt Ltd v. Union of India (2024 SCC OnLine Del 6956)

The petitioner argued that it had been proactively pursuing prosecution of the patent, had been granted a corresponding patent in the United States, and had consistently checked with the patent agent regarding compliance. The respondents submitted that while precedents vest discretion in the Court, they do not establish that the Patent Office acted incorrectly in recording the deemed withdrawal.

Detailed Judicial Reasoning

The Court began by reaffirming the statutory scheme. Under Section 11B of the Patents Act, read with Rule 24B of the Patent Rules 2003 (as applicable during the relevant period), a request for examination must be filed within forty-eight months from the priority date or the filing date, whichever is earlier. Synertec’s last date was therefore 27 November 2023. Since Form-18 was not filed, the deemed withdrawal was a lawful statutory consequence.

Equity Considerations

• Diligent applicants should not suffer due to their patent agent’s inadvertent errors
• No intention to abandon the patent rights could be inferred
• Foreign patent grants showed continued prosecution interest

Citing European Union v. Union of India, the Court reiterated that writ jurisdiction may be invoked in extraordinary circumstances where abandonment stems from the professional lapse of an agent, not the applicant. The Court highlighted the similarity between a patent agent and an advocate representing litigants in civil or criminal court. Through judgments such as Smt. Lachi Tewari v. Director of Land Records and Rafiq v. Munshilal, the Supreme Court has consistently held that litigants should not suffer due to counsel’s inadvertent mistakes. Applying the same principle, the Court found that Synertec had been unfairly burdened with the consequence of deemed withdrawal.

At the same time, the Court cautioned that writ relief should not dilute legislative intent. Section 21(1) of the Patents Act and Rule 138 of the Patent Rules require strict adherence to statutory timelines, and writ restoration cannot become a general rule. It can be granted only in cases where intention, diligence, and absence of negligence are clearly established.

In the present case, the Court was satisfied that the petitioner’s conduct demonstrated diligence, seriousness, and a continuing intention to prosecute the application. Its foreign patent activity reinforced the lack of intention to abandon. To deprive it of rights due to an error not attributable to it would be inequitable.

Final Decision

The writ petition was allowed. The Court set aside the status of “deemed to have been withdrawn” recorded against Patent Application No. 202217030233. The Indian Patent Office was directed to restore the application to its original status and allow the petitioner to file Form-18 (request for examination) within two weeks from the date of the order.

Case Details

• Case Title: Synertec Pty Ltd Vs. Union of India & Anr.
• Order Date: 03 November 2025
• Case Number: W.P.(C)-IPD 53/2025
• Court: High Court of Delhi at New Delhi
• Hon’ble Judge: Justice Manmeet Pritam Singh Arora

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Author

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi