By Renu Bala Rampal and Johny Solomon Raj
Rejection of patent application under section 2(1)(ja) of the Patents Act, 1970 without a detailed analysis by the Controller would be contrary to the provision itself held in a recent judgement of Hon’ble High Court at Delhi in the matter of “Agriboard International LLC vs Deputy Controller of Patents and Designs” pronounced on March, 31, 2022.
Agriboard International LLC vs Deputy Controller of Patents and Designs
Appellant (Agriboard International LLC), a company based in the United States, filed a patent application on March 14, 2019 in the US and a corresponding Indian application on March 13, 2020, claiming priority from the aforementioned US application. The Controller raised the below objections to the said application in India –
- objection relating to novelty under section 2(1) (j); and
- lack of inventive step under section 2(1) (ja) of the Patents Act, 1970 in the first examination report (FER).
The said patent application was rejected after the matter came up for hearing, which led to rejection/ refusal, the Appellant filing an appeal before the Hon’ble High Court of Delhi.
Delhi High Court’s order
The Hon’ble High Court observed that the impugned order dated June 16, 2021 passed by the Controller was a rather short one, and that the same did not even discuss the response given by the Applicant to the objections raised in the First Examination Report (FER). In view of this the Court held that the impugned order lacks completely in reasoning.
The Hon’ble Court relied on the case of Assistant Commissioner V. Shukla and Brother (supra) and also on Manohar v. State of Maharashtra & Ors, and observed that passing of a reasoned and speaking order is an integral part of the principle of audi alteram partem. The application of mind and recording of a reasoned decision are the basic elements of natural justice. There can be no doubt that scrupulous adherence to these principles would be required while rejecting patent applications.
The Hon’ble Court laid down essential three elements which the Controller has to consider while rejecting an invention for lack of inventive step, which are –
- the invention disclosed in the prior art;
- the invention disclosed in the application under consideration; and
- the manner in which subject invention would be obvious to a person skilled in the art.
Any order passed without discussing these elements and arriving at a bare conclusion that the subject invention lacks inventive step would not be permissible, unless it is a case where the same is absolutely clear. The Controller ought to analyze, what is the existing knowledge and how the person skilled in the art would arrive at the invention disclosed in the present application. Without such an analysis, the rejection of the patent application under Section 2(1) (ja) of the Patents Act, 1970 would be contrary to the provision itself.
The Hon’ble Court set aside the rejection of the patent application of the Applicant and remanded the matter back to the IPO for fresh consideration.
This judgment considered the principle of natural justice and observed that the unreasoned and short order of the controller while rejecting the patent application under Section 2(1) (ja) is contrary to the said principle, and laid down the essential elements which have to be discussed by the Controller before rejecting a patent application on the ground of lack of inventive step.
This is a very welcome decision, which will hopefully further improve the patent prosecution process in India. There have been a recent spate of developments in India, and the Courts are playing pro-active role in guiding the Controllers to give more reasoned orders while disposing IP applications. For instance, in the recent case of Pawandeep Singh v. The Registrar of Trademarks & Anr. – W.P. (C) – IPD 7/2022 & CM 30/2022, the Hon’ble Justice Pratibha M. Singh has sought comments regarding, inter alia, removal of templates in orders, and to make some extra space available in the order for Senior Examiners to put their brief reasons for allowing or refusing the application.
Shantanu Mishra, Patent Agent at SSRANA has assisted in the research of this article.