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  • Writer's picturePallaash Shankhdhar

High Court Orders Issuance of Second Examination Report after Amendments in Complete Specifications


INTRODUCTION


In the case of GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD. vs. THE CONTROLLER OF PATENTS AND DESIGNS (AID NO. 20 OF 2022), the Hon’ble Delhi High Court (hereinafter referred to as the “Hon’ble Court”) in a single judge bench decision, remanded a matter back to the Indian Patent Office (IPO) for re-examination while holding that when a complete specification of an Indian Patent Application is amended, such amended specification should be re-examined and a Second Examination Report (SER), under Section 13(3) of the Indian Patents Act (hereinafter referred to as “the Act”), should be issued in the manner stipulated under Section 12 of the Act.


BRIEF FACTS


The present matter originates from the order of refusal (hereinafter referred to as “the impugned order”) issued by the Controller examining the Indian Patent Application Number 201737035802 (hereinafter referred to as the “subject application”), filed by the Appellant GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD. The Controller issued the impugned order on the grounds that the subject application is obvious and anticipated under Section 2(1)(j) of the Act and that the suffers from insufficiency of disclosure under Section 10(4) of the Act.


CONTENTIONS OF THE APPELLANT


The Appellant appealed before the Hon’ble Court on the grounds that the impugned order is a non-speaking order inasmuch as there are no reasons for refusal laid down. It was also the Appellant’s contention that the objections on the ground of lack of novelty and lack of inventive steps cannot stem from the same document. It was also alleged that the impugned order uses the words "novel" and "inventive" interchangeably without appreciating the meaning and content thereof. It was also contended that two additional prior arts D5 and D6 were cited for the first time at the hearing notice without giving any opportunity to the Appellant to respond or make amendments to the same. The Appellant also argued that they were also not granted any opportunity to dispute the alleged insufficiency of disclosure under Section 10(4) of the Act with regard to the term "transformer" which was only raised for the first time at the stage of the hearing.


The Appellant also contended that the Respondent has failed to present any reasons as to why the prior art documents D1-D6 ought to be read together to conclude lack of inventive steps in the subject invention.


Lastly, the Appellant contended that no Second Examination Report (SER) was issued even though the Appellant amended their claims after the objections had been raised in the First Examination Report (FER). Non- issuance of SER also violates the mandate of Section 13(3) of the Act which obliges the Controller to examine the amended specification.


WHAT WAS HELD


The Hon’ble Court was of the following opinion:


· With respect to novelty and inventive step, the Hon’ble Court found that the Respondent has erred in finding that prior art document D1 renders the subject-matter of the subject application obvious as well as anticipated. It was held that the same document cannot be said to render an invention obvious in combination with other documents where it is supposed to deal with every feature of the subject invention and its mode of operation. Accordingly, there were found to be no reasons in the impugned order which demonstrate why the subject invention lacks novelty.


· On the question of issuance of the SER, the Hon’ble Court held that Section 13(3) of the Act makes it apparent that upon amendment of the claims, the amended application ought to be examined in a manner similar to the original application. When a complete specification is amended, such amended specification should be re- examined, and a Report issued in the manner stipulated under Section 12 of the Act. In passing the impugned order, there has been a violation of the statutory provisions in issuing the hearing notice citing additional objections and relying on the same in without granting an opportunity to the Appellant to amend its claim and without issuance of an SER.


In view of the above reasons, the impugned order was found to be unsustainable, and the subject application was accordingly remanded back to the Controller for reconsideration afresh within a period of three months from the date of communication of the order of the Hon’ble Court. The Respondent was directed to issue an SER upon examination of the amended claims of the subject application and provide the Appellant with an opportunity to deal with the objections, if any, raised in the said SER. The Respondent was further directed to provide the Appellant with an opportunity of being heard before disposing of the said application.


CONCLUSION


The above order of the Hon'ble Court ensures adherence to the proper examination procedure for patent applications and emphasizes the importance of issuing a Second Examination Report (SER) after amendments to the specification. It provides clarity on the requirements for patent examination and upholds the rights of the Appellant to a fair and thorough evaluation of their application.

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