JUDGMENT :

[Amit Bansal, J.]

1. The present appeal has been filed under Section 117-A of the Patents Act, 1970 impugning the order dated 12th July, 2017 passed by the Assistant Controller of Patents and Designs in the Indian Patent Application No. 2366/DELNP/2006 (hereinafter “subject application”) filed on 28th April, 2006 for the invention titled “Field Adjustable Impact JAR” (hereinafter “subject invention”).

2. Brief facts relevant to decide the present appeal are as follows:

2.1 The appellant had filed the subject application on 28th April, 2006 at the Patent Office, New Delhi as a national phase application under Patent Cooperation Treaty (PCT) claiming priority from US Application No.10/696,823 dated 30th October, 2003.

2.2 After much delay, the Patent Office examined the subject application and issued a First Examination Report (FER) on 12th February, 2014, in which 9 objections were raised on behalf of the Patent Office. The main objection pertained to lack of inventive steps in terms of Section 2(1)(ja) of the Patents Act, 1970.

2.3 A detailed response was filed on behalf of the appellant to the aforesaid FER on 14th October, 2014, wherein the appellant distinguished the subject invention from the prior art and made submissions with regard to the subject invention being novel and inventive.

2.4 On 26th May, 2017, the Patent Office issued a hearing notice fixing the date of hearing for 12th July, 2017, wherein once again, an objection was taken with regard to lack of inventive steps in view of the prior art. At the oral hearing, the appellant made submissions with regard to novelty and inventive steps, especially in light of the cited prior art documents.

2.5 In terms of Rule 28 (7) of the Patent Rules, 2003, the appellant had the right to file written submissions within 15 days from the date of hearing. However, at the insistence of the Assistant Controller of Patents and Designs, the written submissions dealing with the prior art cited by the Patent Office and explaining how the subject invention is discernible from the prior art, were filed on the same date under protest.

3. The impugned order dated 12th July, 2017 was passed by the Assistant Controller of Patents and Designs on the very same date when the hearing took place and the written submissions were filed, rejecting the subject application on the ground of lack of inventive steps under Section 2(1)(j) read with Section 2(1)(ja) of the Patents Act, 1970 in view of the prior art references GB499616 and US5267613. The relevant part of the impugned order is set out below:

“After going through the oral and written submissions made by Ld. Agent for Applicant with regard to the inventive step in view of citations GB499616 and US5267613 and the amended claims 1-49 produced before me during hearing, It is opined that the claims lacks inventive step and shall be obvious to the skilled person in the art.

Therefore this application is refused patent u/s 15 of The Patent Act 1970 in contravention to the section 2(1)(j) read with 2(1 )(ja).

The application stands disposed off”

4. Counsel appearing on behalf of the appellant submits that detailed submissions were made on behalf of the appellant in response to the FER as well as the written submissions, wherein the subject invention has been distinguished from the prior art cited by the Patent Office. However, the Patent Office has passed a cryptic order without dealing with any of the submissions made on behalf of the appellant. He further submits that subject application has been granted patents in other jurisdictions, especially Australia, Canada, China etc.

5. I have examined the record and heard the counsels for the parties.

6. At the outset, a reference may be made to Rule 28(7) of the Patents Rules, 2003:

“28. Procedure in case of anticipation by prior publication.

(7) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.”

7. As