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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Vexim – Appellant
Versus
Controller of Patents – Respondent
CA. (COMMIPD-PAT) No. 50 of 2022
Decided On : 28-04-2023
Patents Act - Appeal against rejection of patent application - Section 117-A - Methods and Apparatuses for Bone Restoration - Section 2(1)(j), Section 3(i), Section 15 - The impugned order rejected the patent application under Section 2(1)(j) of the Act, but failed to provide reasoning for the decision. The court held that a reasoned decision is required, citing previous judgments and remanded the matter back to the Patent Office for fresh consideration.
Fact of the Case:
The appellant filed a patent application for 'Methods and Apparatuses for Bone Restoration' which was rejected by the Patent Office. The appellant appealed the rejection, citing lack of reasoning in the impugned order.
Finding of the Court:
The court found merit in the appellant's submission that the impugned order lacked reasoning for rejecting the patent application. Citing previous judgments, the court held that a reasoned decision is required while rejecting patent applications.
Issues: Lack of reasoning in the impugned order for rejecting the patent application under Section 2(1)(j) of the Act.
Ratio Decidendi: A reasoned decision is required while rejecting patent applications, considering the existing knowledge, inventive step, and how the subject invention would be obvious to a person skilled in the art.
Final Decision: The impugned order rejecting the patent application was set aside, and the matter was remanded back to the Patent Office for fresh consideration, with a direction to pass a reasoned order within two months.
JUDGMENT :
AMIT BANSAL, J.
1. The present appeal has been filed under Section 117-A of the Patents Act, 1970 (hereinafter ‘the Act’) impugning the order dated 24th July, 2017 passed by the Assistant Comptroller of patents rejecting the Indian Patent application no. 7174/DELNP/2006 (hereinafter “subject application”) titled “Methods and Apparatuses for Bone Restoration” (hereinafter “subject invention”).
2. The impugned order was served on the appellant on 28th July, 2017 and the three months period provided for filing an appeal expired on 28th October, 2017. The present appeal was filed on 29th January, 2018 with a delay of 93 days.
3. For the reasons stated in the application for the condonation of delay, the same is allowed and the delay in filing of the present appeal is condoned.
4. Insofar as the merits of the appeal are concerned, brief facts relevant to decide the present appeal are as follows:
4.2. The Patent Office issued a First Examination Report (FER) dated 4th September, 2013 in terms of which, objection was raised that the claims lack inventive step in view of the prior-art documents referred to as D1, D2, D3, D4, D5, D6 and D7 and therefore, do not constitute an invention under Section 2(1)(j) of the Act. Further, claims 2-17, were also objected to. The FER also raised an objection under Section 3(i) of the Act stating that the claims were non-patentable.
4.3. A detailed response was filed on behalf of the appellant to the aforesaid FER by letters dated 6th August, 2014 and 4th September, 2014. Subsequently, various hearing notices were issued by the Patent Office to the appellant. Vide hearing notice dated 16th March, 2016 the Assistant Controller of Patents maintained the objections relating to claims 1 to 5, 6 to 13 and 14 to 15 and the subject invention lacking inventive steps in view of the prior art documents, D1 and D2. The notice further maintained that the claims 16-17 were non-patentable under Section 3(i) of the Act.
4.4. The appellant filed written submissions on 6th June, 2016 dealing with the prior art cited by the Patent Office and patentability of the subject invention. Along with the written submissions, the appellant also filed revised set of claims.
5. The impugned order was passed by the Patent Office on 24th July, 2017 rejecting the subject application and holding that the amended claims 1 to 5 of the subject invention are not patentable under Section 2(1)(j) of the Act. The relevant part of the impugned order is set out below:
Therefore, the finally amended claims I - 5 nos. of this patent application are not allowed for grant of patent as they lack in inventive step as defined u/s 2(1)(j) read with 2(1)(ja).
The Application is hereby refused patent u/s 15 of “The Patent Act, 1970”.”
6. Counsel for the appellant submits that the respondent has failed to consider the correct set of claims that were presented by the appellant before the Controller. Vide post hearing written submissions dated 6th June, 2016, the appellant had also filed an amended claim set. Out of the five objections raised in the hearing notice dated 16th March, 2016, four objections were waived by the impugned order. However, the subject invention was rejected on the ground of the objection no. 1 as raised in the hearing notice. However, the Patent Office has passed a cryptic order without disclosing any reasons for refusal of the patent.
7. I have examined the record and heard the counsels for the parties.
8. There is merit in the submission of the appellant that the impugned or
A reasoned decision is required while rejecting patent applications, considering the existing knowledge, inventive step, and how the subject invention would be obvious to a person skilled in the art.
The Controller must provide proper reasoning for rejecting a patent application and consider the applicant's submissions, failing which violates the principles of natural justice.
The main legal point established in the judgment is the requirement for a detailed analysis of the existing knowledge and how the subject invention lacks inventiveness in light of the prior art when ....
The judgment emphasizes the requirement for a reasoned decision and scrupulous adherence to principles of natural justice while rejecting patent applications, highlighting the elements of inventive s....
The main legal point established in the judgment is that the rejection of a patent application should be based on the objections raised in the hearing notice, and the decision should not exceed the s....
The Controller must consider the differences between prior art and the claimed invention, provide a reasoned order, and adhere to the principles of audi alteram partem.
The court emphasized the necessity for a detailed analysis on inventive steps in patent applications, ruling that mere conclusions without discourse on prior art are insufficient for rejecting patent....
The impugned order lacked proper discussion of novelty and inventive step objections under Section 2 of the Patents Act.
The main legal point established in the judgment is the importance of accurate references to prior art documents and the need to ensure a fair and accurate consideration of patent applications.
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