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  • Writer's pictureMehak Parvez

High Court reprimands IPO for mechanically passed orders, remands the case for de novo consideration

In a recent judgement of Dolby International AB vs. The Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 10/2021 and I.A. 13552/2021] dated March 14, 2023 concerning an appeal filed by the Applicant against a refusal order passed by the Assistant Controller of Patents rejecting the Applicant’s Application No. 6570/DELNP/2009, the Delhi High Court found the order to be lacking reasoning and adequate explanation for the rejection of the subject application and remanded the application to the Indian Patent Office for fresh consideration by a different Officer.

The Hon'ble Court found that the impugned order was unsatisfactory in terms of its drafting and clarity. The Hon’ble Court examined the impugned order closely and observed that it appeared to have been compiled hastily by piecing together various documents without sufficient explanation for the decision or clear reasoning. The Hon’ble Court also noted that the impugned order was confusing and difficult to understand, with unclear references to claims and no clear explanation for the refusal of the subject application.

The Hon’ble Court further noted that the impugned order disregarded the Applicant’s response to the objections and simply concluded with the comment that the substantive requirements of the Act were not met. The Hon'ble Court observed that the impugned order included a part of the drawing of the apparatus without any introduction or explanation, making it difficult to understand why it was relevant.

The Hon’ble Court asserted that the impugned order reproduced objections from the FER, which were based on two prior arts, and also parts of the notice of hearing and table from the FER, which referred to a third prior art. However, the impugned order failed to mention the prior art(s) with respect to which the inventive step was lacking and simply concluded that Section 2(1)(j) of the Patents Act was not complied with. Furthermore, the impugned order rejected the subject application based on Section 3(k), which was not mentioned in the notice of hearing, and Section 2(1)(j), which was never invoked.

The Hon’ble Court emphasized the importance of patents and stated that “…A patent is meant to be a recognition of the innovative step that has been put into a crafting of an invention. Inventions increment the state of existing scientific knowledge and, thereafter, are of inestimable public interest. Any decision, whether to grant or refuse a patent has, therefore, to be informed by due application of mind, which must be reflected in the decision. Orders refusing applications for grant of a patent cannot be mechanically passed, as has been done in the present case”.

The Hon’ble Court further emphasized that delaying the grant of a patent unreasonably reduces the remaining lifespan of the patent, which can discourage inventors from creating new and innovative methods, products, or processes.

The Hon’ble Court taking cognizance of the situation, remanded the case back to the Indian Patent Office for de novo consideration completely uninfluenced by the impugned order, while granting the Applicant an opportunity to be heard. The Hon’ble Court directed that an order must be passed within two months from the date of judgement.

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