INDIA: HIGH COURT REAFFIRMS THE REQUIREMENT FOR A REASONED REFUSAL ORDER TO BE ISSUED BY THE IPO

The Delhi High Court, vide its order dated December 23, 2022, in the case of N.V. Satheesh Madhav & Anr. vs. Deputy Controller of Patents & Designs (2022/DHC/005797), laid emphasis upon the right of an individual to be heard in a proceeding with respect to a non-speaking rejection order issued by the Indian Patent Office (hereinafter referred to as “the IPO”). The Hon’ble Court also opined against the raising of new objections with the rejection order without offering an opportunity to the Applicant to address the same.

FACTS OF THE CASE:

The subject patent application number 2924/DEL/2008 (hereinafter referred to as, “the application”) was filed before the IPO on December 23, 2008.

An examination report (Office Action) was issued by the IPO on March 30, 2017, objecting to the inventive step of the application under Section 2(1)(j)(a) of the Indian Patents Act (hereinafter, “the Act”), and the patentability of the application under Section 3(h) of the Act, along with other objections as to the Scope and Clarity of the application.

In pursuance of the objections of the learned Controller in the matter, a detailed reply addressing all the objections raised by the learned Controller along with an amended set of claims, were submitted by the Applicants.

A hearing notice was then issued by the learned Controller dated April 09, 2018, whereby the objection with respect to Section 3(h) of the Act was dropped and a new objection under Section 3(d) of the Act was raised.

After the hearing was concluded, written submissions were filed by the Applicant, along with a set of comparative data to meet the objection under Section 3(d) of the Act.

The learned Controller then issued a notice of refusal whereby the application was refused under Section 2(1)(ja), 3(d) and a new objection under Section 3(j) of the Act.

ISSUES CONSIDERED BY THE HON’BLE COURT:

· Whether the IPO may refuse a patent application without giving a reasoned speaking order?

· Whether the IPO may raise new objections with the rejection order without offering the Applicant a right to address them?

As against the first issue, the Hon’ble Court was of the opinion that the impugned order issued by the Controller simply runs to a conclusion that the invention lacks inventive step. However, there is no discussion as to why the subject invention would be defeated by the cited prior arts.

Citing various precedents {Agriboard International LLC v. Deputy Controller of Patents and Designs, (2022/DHC/001206), Assistant Commissioner. Commercial Tax Department v. Shukla and Brothers, [(2010) 4 SCC 785] and Manohar v. State of Maharashtra And Ors., (AIR 2013 SC 681)}, the Hon’ble Court upheld the principle of audi alteram partem and highlighted that while rejecting an invention for the lack of inventive step, the Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration. Without such an analysis, the rejection of the patent application under Section 2(1)(ja) of the Act would be contrary to the provision itself.

Further, the Hon’ble Court also noted that the learned Controller has also failed to consider the comparative data submitted by the Applicants with regards to Section 3(d) of the Act and as a relief granted the Applicants the opportunity of a fresh hearing before the learned Controller for consideration of the said data.

With regards to the second issue, the Hon’ble Court pointed out that objection under Section 3(j) raised by the Controller in the refusal order, was never made a part of the hearing before the Applicants and ordered for a fresh hearing notice to be issued to allow the Applicants to justly review and meet the said objection.

In light of the above, the Hon’ble Court allowed the appeal by setting aside the order of refusal and remanded the matter back to the IPO for a fresh consideration.