INDIA: HC issues directions in view of the recurrent unreasoned orders passed by the Patent Office
Recently, in the case of Huhtamaki Oyj And Anr Vs. Controller Of Patents [C.A.(COMM.IPD-PAT) 158/2022], the Delhi High Court emphasized the importance of reasoned and speaking orders, directing that each objection raised by the Patent Office should be systematically addressed and justified.
The applicant had filed a patent application with application number 6727/DELNP/2014. After the filing, an Office Action (First Examination Report) was issued to the applicant on May 28, 2019. Subsequent to responding to the Office Action, a hearing was scheduled, and the Applicant responded to the objections vide letter dated August 21, 2020. The impugned order was passed three days later on August 24, 2020.
Upon analysis, the Hon’ble Court observed that the impugned order consisted of various parts, including the applicant's arguments and a reproduction of the objections from the hearing notice. The "Analysis" section in the order reproduced the claim of the Applicant's patent application and repeated the objections from the hearing notice.
The Hon’ble Court expressed concern over this recurring issue in the office of the Controller of Patents and Designs, where patent applications are rejected without proper consideration and without acknowledging the applicant's responses. The Hon’ble Court reiterated that the refusal of a patent application is a significant matter. Once granted, a patent is valid for a limited period of 20 years, starting from the date of application and not from the date of grant. The Hon’ble Court opined that “If patent applications are to be decided laconically, as has been done in the present case, patent applicants will have to keep knocking at the doors of the Court, wasting their time in unnecessary litigation. In such circumstances, even if the patent ultimately comes to be granted, the time that has been spent in prosecuting the application, and challenging unreasoned orders of rejection which are passed, leaves hardly any residual life for the patent”.
To address these concerns, the Hon’ble Court issued the following directions:
“(i) Every order which either
(a) rejects an application seeking a grant of a patent, or
(b) accepts, or rejects, any pre- or post-grant opposition to such applications, shall be reasoned and speaking, and shall deal systematically and sequentially with each objection that requires consideration, whether contained in the FER, or the hearing notice, or in any pre- or post-grant opposition, and provide reasons as to why the objection is sustained or rejected.
(ii) If there is no pre- or post-grant opposition to the patent, and objections are raised only by the office of the Controller itself, in the FER or Hearing Notice, and the reply of the applicant in response thereto is found to be worthy of acceptance, then, too, the order granting the patent should briefly state why the applicant’s reply is accepted, as this would facilitate any post-grant opponent, who seeks to oppose the grant of the patent, or seek its revocation after the patent is granted.
(iii) The requirement of a reasoned and speaking order would obviously not apply if the patent, as sought, is granted, and there is no objection in the FER or hearing notice, or pre-or post-grant opposition thereto”.
Emphasizing the importance of reasoned and speaking orders, the Hon’ble Court instructed adequate publication of these directions within the office of the Controller General of Patents and Designs to reach all adjudicating authorities. Further, the Court emphasized that if adjudicating officers persist in issuing orders resembling the one challenged in the present Appeal, disciplinary action may be initiated. While it was acknowledged that past occurrences cannot be altered, the Court requested the Controller General to take appropriate measures and provide clear instructions to prevent the recurrence of such orders. This proactive approach, in turn, would prevent the Court from being placed in the undesirable position of issuing similar orders in the future.
Further, Hon’ble Court highlighted the need for training in writing quasi-judicial orders for patent applications and oppositions. Recognizing the significance and potential impact on public interest, The Controller-General was suggested to consider conducting a training course focused on writing such orders at their discretion.
Finally, the impugned order was quashed and the subject application was remanded for de novo consideration by an officer other than the one who passed the impugned order.
Additionally, the Hon’ble Court directed the assigned adjudicating officer to grant the Applicant an opportunity for a hearing on June 5, 2023. The relevant adjudicating authority must then issue a final order within three weeks from the date of the hearing, addressing all the Applicant's arguments, submissions, and any oral presentations made during the hearing. The order should demonstrate a thoughtful and considered approach.
The Hon’ble Court's directives regarding reasoned and speaking orders, advocating for training in writing quasi-judicial orders, and ensuring widespread dissemination of the directions, strives to enhance fairness, transparency, and efficiency in the patent examination process. These measures are essential for upholding the rights of patent applicants, encouraging innovation, and maintaining the integrity of the patent system.