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2023 Supreme(Del) 6055
IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Emerson Process Mangement Power And Water Solutions Inc - Appellant
Versus
Controller of Patents - Respondent
C.A.(COMM.IPD-PAT) 178 of 2022
Decided On : 08-12-2023
Important Points
The requirement of associated hardware being novel and inventive is no longer a ground for rejection of patent applications for computer software.
Subject
Intellectual Property Law - Patents
Act Referred
Headnote
Patents Act, 1970 - Computer Software - Rejection of patent applications based on novelty and inventiveness of associated hardware
Fact of the Case:
The court disposed of appeals challenging the rejection of patent applications for computer software due to lack of novelty and inventiveness in the associated hardware.
Finding of the Court:
The court set aside the impugned orders and remanded the applications for de novo consideration, granting the appellant an opportunity of hearing before any decision is taken.
Issues: Rejection of patent applications for computer software based on the novelty and inventiveness of associated hardware
Ratio Decidendi: The main ground of rejection, i.e., the requirement of associated hardware being novel and inventive, no longer figured in the guidelines followed by the Patent Office, leading to the quashing of the impugned orders and remand for de novo consideration.
Final Decision: The impugned orders were quashed and set aside, and the applications were remanded for de novo consideration to be assigned to a competent officer, with the appellant granted an opportunity of hearing before any decision is taken.
Mr. Rohit Rangi, Advocate, for the Appellant.
Mr. Harish Vaidyanathan Shankar, CGSC, Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday and Mr. Krishnan V., Advocates, for the Respondent.
ORDER (ORAL)
C. HARI SHANKAR, J.
1. The orders under challenge in these appeals, instituted under Section 117A of the Patents Act, 1970 , are dated 13 April 2017 and 21 December 2015, rejecting the appellant's Application Nos. 1253/DEL/2006 and 4197/DEL/2015 for registration of patents relating to computer software. As the issue in controversy is common, both these matters are being disposed of by this order.
2. In both these matters, Mr. Vaidyanathan, with customary fairness, points out that the main ground on which the applications filed by the Appellant seeking registration of a patent relating to computer software was rejected was that the associated hardware was not novel and inventive, the requirement of the associated hardware being novel and inventive, he fairly states, no longer figures in the guidelines followed by the Patent Office. As this constitutes the main ground of rejection of the petitioner's applications, Mr. Vaidyanathan suggests that the impugned orders may be set aside and the applications remanded for de novo consideration.
3. Needless to say, Mr. Vaidyanathan, learned Counsel for the appellant is agreeable to this course of action.
4. Accordingly, the impugned orders dated 13 April 2017 and 21 December 2015 are quashed and set aside.
5. Application No. 4197/DEL/2015 and 1253/DEL/2006 dated 21 December 2015 and 13 April 2017 are remanded for de novo consideration to the Patent Office to be assigned to a competent officer. The Appellant shall be granted an opportunity of hearing before any decision is taken. The Patent Office is directed to take a decision as expeditiously as possible and preferably within a period of three months from today.
6. Both the appeals stand allowed to the aforesaid extent.
