India: another one bites the dust - unreasoned refusal order for non-attendance at a hearing

The Hon’ble Delhi High Court (hereinafter, ‘the Court’) in the appeal of Star Scientific Limited vs. The Controller of Patents and Designs held that non-attendance at a hearing does not imply implicit or explicit abandonment, and it is incumbent on the Controller to pass a reasoned order while disposing of a patent application. The appeal was filed to challenge the refusal order wherein the patent application was rejected under Section 15 of the Patents Act, 1970 (hereinafter ‘the Act’), due to non-attendance at the scheduled hearing following the submission of detailed response to the First Examination Report (FER).

An appeal under Section 117A of the Act was filed by Star Scientific Limited (hereinafter ‘the Appellant’) challenging the impugned order passed by The Controller of Patents and Designs (hereinafter ‘the Respondent’) refusing a patent for the application titled ‘Composition, Methods, and Apparatuses for Catalytic Combustion’.

The Appellant filed a detailed response to the FER on February 29, 2022, along with the supporting documents and proposed claim amendments, responding to the objections raised by the Respondent. Thereafter, a hearing was scheduled on December 08, 2023, however, the agents of the Appellant intimated the Respondent that due to financial constraints, the Appellant was unable to proceed with the prosecution of the patent application and thereby sought disposal of the patent application as per the provisions of the Act. Thus, the Respondent proceeded to pass the impugned order dated December 18, 2023, whereby, the patent application was refused due to non-attendance at the hearing, thus the objections in the hearing notice remained outstanding.

During submissions at the appeal, the Appellant contended that the impugned order did not take into account the detailed response to the FER and did not consider that the patent had already been granted in nine other countries. Additionally, the Appellant pointed out that Rule 28(7) of the Patent Rules provides a fifteen days window to file written submissions, but the Respondent issued the order within ten days, when the time to file written submissions had not even lapsed. On the other hand, the Respondent contended that the appeal was baseless and stated that the Appellant’s non-appearance was a conscious decision to abandon the application.

The Hon’ble Court held that the Appellant not attending the hearing cannot prima facie be the basis for passing a decision under Section 15 of the Act, and it does not automatically imply an  abandonment, especially, when the Appellant had already filed a detailed reply to the FER report. Further, it was noted by the Court that upon reading the emails written by the Appellant to the Respondent, it was apparent, that though the Appellant did not attend the hearing before the Respondent, however, there was a request for disposal of the patent application by the Appellant as per the provisions of the Act.

Discussing Ferid Allani vs. Union of India and Others the Hon’ble Court further elaborated that mere non-attendance of the Appellant at the hearing will not be deemed to be an abandonment of the application unless it was clear from the party’s explicit actions. Another aspect that the Court noted was that the subject application was registered/granted in various jurisdictions, which is also an important factor to be considered while determining patentability, (Otsuka Pharmaceutical Co. Ltd. vs. Controller of Patents).

Thus, relying on Rule 28(5) of the Patent Rules, 2003 the Hon’ble Court held that the Respondent was bound to decide the patent application, irrespective of whether or not the Appellant attended the hearing.

Importantly, the Hon’ble Court while upholding the appeal opined that abandonment requires a conscious act, not an assumption based on procedural lapse. The impugned order was set aside and the matter remanded back to the Respondent for fresh consideration with the advice that it is necessary to take decisions on merit rather than procedural grounds alone.