Patent applications must be supported by substantial reasoning, including consideration of foreign patents and prior art, during rejections by patent controllers.

JUDGMENT :

P.B. BALAJI, J.

1. The appellant, aggrieved by the impugned order rejecting the Patent Application in 4590/CHE/2011, in and by an order dated 08.08.2020, has preferred the present appeal.

2. I have heard Mr. Thriyambak J.Kannan, assisted by Mr.S.Harish for M/s.Khaitan & Co. learned counsel for the appellant and Mr.Prasad Vijayakumar, learned Senior Panel Central Government Standing Counsel for the respondent.

3. The learned counsel for the appellant, Mr.Thriyambak J.Kannan, would take me through the specifications and the claims made and would submit that there has been total non-application of mind on the part of the respondent while rejecting the Patent Application. He would also submit that the respondent has not assigned any reasons whatsoever for ultimately rejecting the Patent Application. He would also take me through the written submissions as well as the explanation to the First Examination Report (FER) to fortify his contention that, despite the objections of the respondent being adequately explained and met, none of it has been considered by the respondent in the final order, rejecting the Patent Application.

4. The learned counsel for the appellant would also submit that for the very same invention, the appellant has been successfully granted Patents in several other countries and though the same may not have a binding effect, according to the learned counsel of the appellant, the foreign Patents certainly had a persuasive effect on the Indian Patent Controller and unfortunately, none of these have even been touched upon by the respondent in the final order.

5. In support of his submissions, he would place reliance on the following decisions,

5.1. In AGFA NV and Anr vs. The Assistant Controller of Patents and Desings & Anr in CA.(COMM.IPD-PAT)477/2022 dated 02.06.2023, where the Delhi High Court held that when the claim is rejected on the ground of 'common general knowledge', the order should provide reference for such 'common general knowledge'. The learned counsel for the appellant referring to this decision would submit that even in the instant case,the respondent has cited 'common general knowledge' in the art.

5.2. In Microsoft technology licensing vs. The Controller of Patents and Designs and Anr , in CMA(PT)No.21 of 2023 dated 20.09.2023, this Court held that when same prior art documents were taken into consideration before Patent was granted by Foreign Patent Office, the test of obviousness being common across jurisdictions, at least a material consideration ought to have been undertaken while deciding the Patent Application.

5.3. In Pinnacle Engines Inc and another vs Assistant Controller of Patents & Designs, reported in 2024 SCC Online Mad 1052, while deciding a Patent Appeal, this Court held that when there is no analysis or discussion of the features of the claimed invention, then the impugned order is effectively unreasoned and cannot be sustained.

5.4. In the case of Stempeutics Research Pvt.Ltd vs. The Assistant Controller of Patents and Designs , reported in MANU/IC/0023/2020, the Delhi High Court held that when identical claims have been granted in major jurisdictions and yet patent claims were rejected in India, the same was in contradiction to the statements and objects of the Patents Amendment Act 2005, thereby amounting to injustice and also resulting in acting against the principles of equity and fair play.

6. The learned counsel for the appellant further submit that the respondent has also not