India: HC holds that Controller’s order should reflect extensive analysis of Applicant’s submissions

In the order Dr. Sapna Nangia vs The Assistant Controller Of Patents and Designs[1] dated February 22, 2023, the Hon’ble Delhi High Court (hereinafter referred to as “the Hon’ble Court”) has set aside an order by the Assistant Controller of Patents and Designs (hereinafter referred to as “the Controller”) against the Applicant and has held that the Controller’s orders should reflect the application of mind to the objections contained in the First Examination Report (hereinafter referred to as “the Office Action”), vis-à-vis the defence of the patent applicant thereto.

The Applicant, in its patent application numbered 201911010599 dated March 19, 2019, sought registration of a patent claiming a “Device and process for obtaining individualised tactile feedback replicating breath hold of patient”. The Controller in the Office Action held that the patent sought lacked inventive step within the meaning of Section 2(1)(ja) of the Indian Patents Act (hereinafter referred to as “the Act”), as the claims were obvious with respect to the two prior art documents, D1 and D2, cited by the Controller relating to “Patient positioning verification tool for radiosurgery” and “System and method for motion compensation in medical procedures” respectively.

According to Section 2(1)(ja) of the Act, “inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.”

The Controller alleged that the cited documents D1 and D2, in combination, disclosed the independent claim 1 of the impugned application and hence the said claim was not allowable under Section 2(1)(j) of the Act. Further, the Controller remarked that the dependent claims did not contain any features which, in combination with features of any claim to which they refer, met the requirements of the inventive step. The Office Action also raised objections under Section 3(i) and Section 10(5) of the Act pertaining to the non-patentability of diagnostic, therapeutic and surgical methods for the treatment of humans or animals and unity of invention, respectively. However, these objections did not form part of the grounds on which the Controller rejected the Applicant's application.

The Applicant filed a reply to the Office Action dated July 29, 2020, pursuant to which notice of hearing was issued by the Controller, in which the inventive step objection was retained and a new prior art document D3 was cited relating to “Patient positioning method and apparatus used in conjunction with a charged particle cancer therapy system”. Additionally, an objection under Section 10(4)(c) of the Act was raised against the phrase “the end of the movable pencil does not touch the patient while in use” in claim 8 of the impugned application and it was alleged that the said phrase was not within the scope of the description.

On September 25, 2020, the Applicant was granted an opportunity of hearing by the Controller subsequent to which the Applicant filed written submissions before the Controller on October 13, 2020. However, in an order dated January 29, 2021, the Controller rejected the impugned application based on the lack of inventive step objection under Section 2(1)(j) of the Act.

The Applicant filed an appeal under Section 117 of the Act, against the said order, contesting that there was no discernible consideration of the grounds urged by the Applicant, though the written submissions of the Applicant were extracted practically in extenso.

Court’s observations

The Hon’ble Court concurred with the Applicant’s submission and asserted that “the decision of the learned Assistant Controller may not be entirely unreasoned, but is too perfunctory to sustain judicial scrutiny. Some amount of application of mind to the contentions advanced by the applicant in response to the FER as well as the written submissions advanced before the learned Controller was required to be manifested in the impugned order, inter alia, so that this Court would be in a position to assess for itself whether the grounds on which the learned Assistant Controller deemed it appropriate to reject the appellant's application were sustainable in law.” The Hon’ble Court further remarked that the “grant or rejection, of a patent, is an extremely serious matter” as an entire industry is affected by a decision either to grant, or to refuse, a patent, and, in either case, the commercial and financial ramifications are huge. An incisive examination of the objections raised in the Office Action, and the response of the patent applicant thereto, must be manifest from the order passed by the Controller and there is no scope for any short shrift in the matter.

The Hon’ble Court, dismissing the Controller’s decision, remanded the captioned matter for de novo consideration, granting the Applicant another opportunity of hearing, and stated that the reconsideration would begin from the point where the opportunity of personal hearing was granted to the Applicant, and hence would be restricted to the objections contained in the notice of hearing dated September 18, 2020.

Conclusion

The Hon’ble Court’s decision emphasises the significance of comprehensive scrutiny of patent applications sought by the Patent Office and the need for reasoned orders, ensuring the effective and transparent evaluation of patent applications.