Consequent to the Delhi High Court’s direction in Saurav Chaudhary v. Union of India, CGPDTM has notified the constitution of a committee to draft the Code of Conduct for Patent and Trademark Agents. Md. Sabeeh Ahmad writes a tidbit on this development below. Sabeeh is an Advocate and is a law graduate from AMU, Aligarh. His previous posts can be accessed here.
SpicyIP Tidbit: Committee Constituted to Draft the Code of Conduct for Patent and Trademark Agents
By Md. Sabeeh Ahmad
In compliance with the Delhi High Court’s ruling in Saurav Chaudhary v. Union of India & Anr., a committee for drafting “Code of Conduct” (CoC) for Patent and Trademark Agents has been constituted comprising of members nominated by the Department for Promotion of Industry and Internal Trade (DPIIT). Previously the High Court had directed CGPDTM to prepare a CoC to regulate the conduct of Patent and Trademark Agents in light of multiple instances of negligence by them (see for instance here and here). Another ad-hoc committee has been constituted to deal with the complaints, if any, filed against the Patent or Trademark Agents until the CoC comes into effect. These committees come amidst a spiral of controversies that the CGPDTM has found itself into.
Background
Delhi High Court in its July 4 judgment, authored by Justice Prathiba Singh, had directed the CGPDTM to prepare a draft code of conduct to regulate the conduct of the Patent and Trademark Agents (para 68). The case pertained to negligence by a Patent Agent by failing to respond to a FER which subsequently led to abandonment of the application (Aditya has covered the case in detail here). The Court had set aside the abandonment order allowing the petitioner to submit a reply to the FER and also directed the CGPDTM to hold an enquiry against the Patent Agent. For dealing with complaints, the Court had directed for the constitution of a committee consisting of at least two officials from the patent/trademark office and a senior IP practitioner (also registered as a Patent/TM Agent and with at least 15 years of practice). For the Code of Conduct, the Court had directed that the same be notified within 6 months, i.e., by December 31, 2024.
The Public Notice
Both the Committees (for drafting of CoC and Ad-hoc committee for complaints) have three members from the CGPDTM office and two IP practitioners. Prof. Unnat Pandit (CGPDTM), N.K. Mohanty (Senior Joint Controller of Patents and Designs), P.K. Pandey (Deputy Registrar, TM, GI, and Copyright), Subhatosh Majumdar and Rajeshwari Hariharan (both IP Practitioners) are the members of the ad-hoc committee. The CoC drafting committee has the same members except for two – N.R. Meena (Senior Joint Controller of Patents and Designs) and S.K.Pandey (Senior Joint Registrar, TM, GI, and Copyright) who replaced N.K. Mohanty and P.K. Pandey from the ad-hoc committee.
The public notice on the CoC committee has invited suggestions within just 7 days of the notice, i.e. by September 20, 2024, which in my opinion is very less. Negligence on part of Patent and Trademark Agents is a serious issue and can have major implications on the registration or renewal of their relevant applications/ registrations. Therefore, in order to devise a working and effective code, it is essential that the committee takes into account the suggestions and submissions of both these Agents and the general public hiring these Agents. Considering the size of relevant stakeholders, and to enable them to make productive suggestions, it becomes important that sufficient time be granted to them to submit their suggestions.
One probable reason for such a short time frame for inviting suggestions could be the December 31 deadline to notify the Code. However, if that is the case, it is also important to note that the judgement had directed the CGPDTM to put up a draft CoC within two months of the judgment for stakeholder consultations and no such draft has been uploaded yet. Won’t such an omission be in contempt of the Court’s direction? Anyways, we hope that now once the draft CoC is prepared the CGPDTM could publish it promptly and allot sufficient time inviting comments on the same.
Prior Thoughts
Over the years, the blog has covered several instances of professional negligence by Patent Agents (read here, here and here), keeping in mind the crucial role such Agents play in patent or trademark prosecution. Lokesh had previously pointed out here that legislative solutions for the issue of governance and supervision of Agents already existed within Section 130 (Removal from register of Patent Agents and restoration) of the Patent Act, Rule 116 (Removal of a name from the register of Patent Agents) of Patent Rules, and Rule 151 (Removal of Agent’s name from the register of Trademark Agents) of the Trademark Rules, 2017. These provisions empower the Controller to remove the name of such Agents, from the relevant registers, who were not fit and proper by reason of any act of negligence, misconduct or dishonesty committed in their professional capacity. Aditya had interestingly also identified several issues that the CoC can address, mostly consisting of non-communication and non-filing by agents. Therefore, if done rightly, the CoC will be an impactful instrument when put into practice and hopefully will result in addressal of some key issues that the patent and trademark prosecution processes are currently plagued with.