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  • Writer's pictureSurya Chauhan

High Court directs IPO to re-evaluate divisional application, stresses on examination of all claims


In a significant legal development, in the case of Fisher and Paykel Healthcare Limited versus the Controller of Patents and Designs & ANR., the Hon’ble Delhi High Court allowed a writ petition under Article 226 of the Indian Constitution challenging the First Examination Report, issued by the Controller of Patents rejecting Patent Application No. 202118034146 for an invention titled “CONNECTIONS FOR HUMIDIFCATION SYSTEM”.

Relevant facts:

In the present matter, a divisional application bearing the number 202118034146, was filed by the Applicant, encompassing a total of 149 claims. Following the request for examination, the Patent Office issued a First Examination Report dated October 17, 2022, which only assessed claim number 148, while refusing to evaluate claims 1-147 and 149 under Section 59(1) of the Indian Patents Act (hereinafter referred to as the Act), on the grounds that the claims were beyond the scope. Subsequently, a writ petition was filed by the Applicant, under Article 226 of the Indian Constitution, seeking redressal for the impugned First Examination Report.

Contentions and Concerns by the Petitioner:

The crux of the petitioner's arguments in the reply to the Examination report and the writ petition broadly resided in three contentions, as follows:

Prematurely assessed the application under Section 16 of the Act

Prematurely assessed the application under Section 59, which was not applicable to the divisional at the moment; and,

did not examine all the claims as required under Sections 12 and 13 of the Act, in spite of the fact that all the fees for all the claims had been paid at the time of filing and the Request for Examination encompassed a request to examine all the claims.

During the course of proceedings, the counsel for the Respondent readily agreed that the impugned First Examination Report was erroneously passed under Section 59 of the Act.

Hon’ble Delhi High Court’s Observations:

The Hon'ble Delhi High Court meticulously considered the arguments presented in the writ petition and concluded that the impugned First Examination Report had been erroneously issued under Section 59 of the Act. Accordingly, the Court held that the application should be remanded back to the Controller for a fresh evaluation, strictly adhering to the provisions outlined in Section 16 of the Act. Furthermore, the Court directed the Controller to afford the applicant an opportunity for a hearing before passing a fresh order.

Significance and Implications:

The Delhi High Court's ruling in the writ petition carries significant implications for the evaluation process of patent applications. By identifying the erroneous application of Section 59, the Court underscores the importance of adhering to the correct legal framework in evaluating divisional patent applications in India. The judgment emphasizes the need for a thorough and comprehensive examination of all claims as required by the Act, ensuring a fair assessment of the patent application's scope and eligibility.

Moreover, the Court's directive for a fresh evaluation underscores the principle of justice and fairness in patent proceedings. By ordering reconsideration of the application, the Court ensures that the applicant's rights are adequately protected and that the evaluation is conducted in accordance with the appropriate provisions of the Act. Moreover, the Court's insistence on granting the applicant an opportunity for a hearing, serves to promote transparency and procedural integrity in the Indian Patent evaluation process.


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