India: An unreasoned refusal order is in violation of the procedure and intent of the Patents Act
In the case of Protean Electric Ltd vs. The Controller of Patents and Designs, the Hon’ble High Court of Calcutta analysed a refusal order issued against an Indian patent application and remanded the matter back to the Indian Patent Office in view of unreasonable and grave violations of the examination procedure carried on by the Respondent.
BRIEF FACTS OF THE CASE
In the present case, an appeal was filed under Section 117(A) of the Indian Patents Act (hereinafter referred to as “the Act”), after the Appellant’s Indian patent application number 1023/KOLNP/2014, filed on May 13, 2014, (hereinafter referred to as “the subject application”) was rejected grant by the respective Controller (hereinafter, referred to as “the Respondent”) in an allegedly undue manner.
After a delay of almost 5 years of filing the request for examination by the Appellant on September 20, 2014, the First Examination Report (FER) was issued on January 07, 2019. The response to the FER was filed by the Appellant on July 03, 2019, wherein the Appellant made the required amendments in pursuance of the objections raised by the Respondent in the FER. The matter was then fixed for a hearing on August 10, 2021, via a hearing notice, wherein the Respondent brought in two new prior arts as a challenge to the novelty and inventive step of the subject application. Thereafter, the date of the hearing was repeatedly adjourned and finally, the examination procedure was complete after almost 8 years.
Upon the completion of the examination procedure, the Respondent refused the grant of the patent to the Appellant. Aggrieved by the said order of the Respondent, the Appellant filed an appeal before the Hon’ble Court.
CONTENTIONS RAISED BY THE APPELLANT
Firstly, the Appellant alleged that the entire process of examination in the present case had been marred by an undue delay caused by the Respondent in examining the subject application.
Secondly, the Appellant contended that the Respondent in the FER unjustifiably recommended changes in view of the cited prior art D1. Nevertheless, the Appellant filed a response catering to the objections raised in the FER. However, the Appellant alleged that the Respondent failed to consider the said response and moved the subject application for a fresh examination, which was in complete violation of the due process of the examination procedure laid down within the Indian Patent law.
Lastly, the Appellant alleged that during the re-examination of the subjection application, the Respondent raised 2 new prior art documents (D2 and D3), raising completely new objections with respect to novelty and inventive step as that from the FER, and entirely disregarding the amendments made by the Appellant in response to the FER.
THE HON’BLE COURT’S ANALYSIS AND CONCLUSION
The Hon’ble Court was of the explicit opinion that the Ld. Controller has failed to adhere to the procedure for consideration of a re-filed application which is stipulated under the Act and the Rules. The re-examination of a re-filed application is a mandatory procedure, and the Controller was statutorily bound to follow the same.
The Hon’ble Court further condemned the unreasonable delay of nearly 8 years between the filing of the request for examination and the completion of the examination procedure, and further noted the following violations of the procedure made by the Respondent:
· The delay caused was found to be in violation of the statutory timelines provided under Rule 24B of the Indian Patent Rules (hereinafter referred to as “the Rules”).
· The subject application was re-examined without the issuance of any reports to the Appellant.
· The Respondent had raised two new prior arts in the hearing notice thereby violating the mandate under Section 13(3) of the Indian Patents Act.
In addition to the above, the Hon’ble Court also observed that “the tests to determine novelty and obviousness are entirely different and can never co-exist with respect to the same document”. It was held that the Respondent has also demonstrated non-application of mind while analysing the subject application for novelty and inventive step against the prior art D1 by concluding the subject application lacks both novelty and inventive step in view of D1.
Concludingly, the Hon’ble Court held that the Respondent had erred in examining the subject application and had issued an unreasoned order in complete violation of the procedure and intent established by way of the Act and the Rules. Accordingly, the Hon’ble Court remanded the matter back to the Controller for consideration afresh within a period of three months from the date of the order of the Hon’ble Court and after awarding a right of hearing to the Appellant.
 (AID NO. 15 OF 2022)