The court held that a writ petition can challenge a patent order despite alternative remedies, emphasizing the need for reasoned decisions in patent matters.

ORDER :

This writ petition raises the question as to whether discretionary jurisdiction under Article 226 of the Constitution of India may be exercised in respect of an order rejecting a pre-grant opposition.

2. The 4^th respondent herein filed Indian Patent Application No.9067/DELNP/2010 in respect of the invention titled 'Device and Method for Fluorescence-based Imaging and Monitoring'. The petitioner lodged a pre-grant opposition in respect thereof and such opposition was rejected while granting the patent by impugned order dated 19.07.2023. The present writ petition was filed in the said facts and circumstances.

3. Learned counsel for the petitioner submitted that the impugned order disregards material evidence and is completely unreasoned thereby justifying interference under Article 226. The first contention of learned counsel was that evidence placed on record by both parties finds no mention in the impugned order. In particular, learned counsel points out that the petitioner had placed on record the affidavit of Mr.Ananth Krishnan and, subsequently, the affidavit of Dr. Balasubramaniyam Pesala. After pointing out that these were affidavits of persons skilled in the art (PSITA), learned counsel contends that it cannot be said that these affidavits were considered in substance merely because the impugned order contains reference to cited prior arts.

4. By inviting my attention to the conclusion in the impugned order with regard to lack of novelty, learned counsel submits that the Controller merely recorded and accepted the contention of the 4^th respondent/patent applicant with regard to the alleged difference between the CCD sensor chip of D2 and the image acquisition device used in the impugned invention. She submits that the order contains no reasons either for accepting the submission of the patent applicant or for rejecting the contention of the opponent.

5. Similarly, with reference to the conclusion on inventive step over D1-D3, learned counsel submits that the contention of the petitioner/opponent that D3 inherently teaches the existence of power supply and portability was noticed, but the Controller recorded the finding that the invention was not obvious merely because D1 and D2 in combination with D3 failed to disclose all the features of the alleged invention. In other words, the contention of learned counsel is that the Controller conflated the requirements of novelty analysis with those of obviousness analysis. With reference to prior art D7, learned counsel submitted that the conclusion that D7 is not portable was reached entirely based on the submissions of the patent applicant and that no independent reasoning is discernible.

6. As regards the conclusions with regard to Section 3(d) and 3(f) of the Patents Act, 1970 (the Patents Act), learned counsel submits that the objection under Section 3(d) that the impugned invention involved mere use of a known process, machine or apparatus should not have been rejected merely because it was previously held that the machine passes the novelty test. Likewise, she submitted that the objection under Section 3(k) that the impugned invention is a mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way was rejected by stating without basis that the components of the device do not function independently, and by merely recording that the contentions of the patent applicant in paragraph 143 of the reply statement were accepted.

7. Before concluding, learned counsel pointed out that the caveat petition lodged in the Delhi High Court by the 4^th respondent was not disclosed in the writ petition because of lack of materiality inasmuch as no appeal lies against the impugned order.

8. Mr.P.V.Balasubramaniam, learned senior counsel, made submissions in response. His first contention was that the Patents Act does not provide for an appeal against an order rejecting a pre-grant opposition. Consequently, he contends that t