The impugned order lacked proper discussion of novelty and inventive step objections under Section 2 of the Patents Act.

JUDGMENT

Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.

2. The present appeal under section 117A(2) of the Patents Act, 1970 (hereinafter, "Act") has been filed by the Appellant-Nippon Steel Corporation challenging the impugned order dated 5th March, 2012 passed under Section 15 of the Act.

3. Vide the impugned order, Appellant's application bearing no. 435/DEL/2006 for grant of a patent in respect of an invention titled "Non-Oriented Electrical Steel Excellent in Magnetic Properties in Rolling Direction and Method of Production of Same" (hereinafter, `subject invention'), was rejected by the Respondent-Assistant Controller of Patents & Designs.

4. The present appeal was, initially, filed before the Intellectual Property Appellate Board (`IPAB') in 2012 and was, thereafter, transferred to this Court after the enactment of the Tribunals Reforms Act, 2021.

5. The Appellant filed an application for grant of a patent on 16th February, 2006 with priority date of 23rd February, 2005. The first examination report (FER) was issued on 23rd June, 2010 as per which certain objections were raised in respect of novelty, inventive step, etc.

6. A reply dated 1st October 2010 was submitted by the Appellant along with the amended claims. Thereafter, a hearing notice dated 1st September 2011 was issued for a hearing on 4th October, 2011. The Appellant, however, submits that he had sought an adjournment on the said date vide letter dated 27th September 2011. The case of the Appellant is that though the written submissions were submitted however, they had sought an adjournment before the Respondent. The impugned order has been passed, according to the Appellant, without providing a hearing to the Appellant. The Appellant's submissions are as under:

"3.4 That through the said hearing notice, the Respondent fixed the date for hearing in the said patent application on 4.10.2011 at 11.00 am. It is submitted that the attorney for the applicant reported the matter to the designated attorney of Applicant in Japan seeking instructions in the matter. However, it transpired that due to some unavoidable reasons the inventors may not be available during the relevant period in order to provide instructions as required. Thereupon, the attorney for the Applicant vide letter dated September 27, 2011, requested the Respondent for adjournment of hearing to some later date. Further, on the same date, the attorney for the Applicant also made a telephonic call to the learned Controller and made the same request. Additionally an email dated 29.09.2011 was also sent to the Respondent making the same request.

3.5 That pending the reply of the Respondent to request dated September 27, 2011, the attorney for the Applicant filed a written submission on October 13, 2011 further modifying/amending the claims. The said written submission also clearly made it categorically clear that the attorney for the Applicant has not received any response from the Respondent in respect of their request for adjournment of the hearing dated 04.10.2011.

3.6 That to the utter shock of the attorney of the Appellant while checking the website of the patent office on 13th March, 2012, he noticed that the said patent application had been refused under Section 15. However, the copy of the impugned order was not available on the website. It is submitted that such recordal of refusal under Section 15 on the official website was without any hearing to the Applicant. Immediately, attorney for the Applicant, on the next day i.e. 14.03.2012, made a representation to the Technical Head of the Delhi Patent Office narrating the circumstances under which the said representation was being made and requesting him to review the matter and provide hearing to the Applicant. A copy of the letter dated 14.03.2012 is annexed herewith and marked as Exhibit-A10."

7. On behalf of the Respondent, this position is disputed, and it is submitted that the Appellant was given proper notice