P.C.:

1. The captioned Commercial Miscellaneous Petition impugns an order dated 18th February 2021 (“the Impugned Order”) by which Respondent No. 1 (“the Controller”) has rejected Patent Application No. 201921036412 (“the said Application”) filed by the Petitioner seeking a patent in respect of “A MEDICAL THERAPEUTIC DEVICE” (“the said invention/device”).

Submissions on behalf of the Petitioner

2. Mr. Shetty, Learned Counsel appearing on behalf of the Petitioner, submitted that the Impugned Order is liable to be set aside and the matter be remanded for fresh adjudication before a different Controller since (A) the order was passed in breach of the mandatory procedure prescribed under Sections 14 and 15 of the Patents Act,1970 (B) the order is cryptic and unreasoned, since (i) the order failed to establish any coherent analytical link between the prior art cited and the claimed invention/device and (ii) the order failed to consider the FAQ, credential files, and other material placed on record with the post-hearing written submissions and (C) the Controller had adopted an inconsistent approach and rendered contradictory findings.

A. Impugned Order Contrary to Sections 14 and 15 of the Patents Act

3. Mr. Shetty submitted that a combined reading of Sections 14 and 15 of the Patents Act, 1970, read with Rules 28(1), 28(2) and Rule 129 of the Patent Rules, mandates a fair, consultative, and sequential process before a patent application can be refused. He pointed out that where the Examiner or Controller identifies any defect, the Controller must first communicate the gist of specific objections to the Applicant and, if requested, afford a hearing to such Applicant. He pointed out that thereafter, if the Controller remains unsatisfied, the Applicant could in terms of Section 15 be granted an opportunity to amend the application and only upon failure to do so or after doing so, if the same still was lacking, the Controller may reject the Application. He thus submitted that rejection/refusal of any Application must always be preceded by clear communication of objections and a reasonable opportunity to cure them.

4. Mr. Shetty then submitted that in the facts of the present case, the Controller had not acted in accordance with the mandate of Sections 14 and 15 of the Patents Act. He pointed out that the oral hearing had concluded on a positive note, with an exchange of “Thanks” and taking on record the Petitioners written submissions without identifying any deficiency thus making it implicit that the Petitioner Application was not lacking in sufficiency. He submitted that despite this the Controller had dismissed the Application inter alia, by recording that the disclosure was insufficient. Mr. Shetty took pains to point out that at no stage prior to the passing of the Impugned Order did the Controller indicate to the Petitioner that the said Application was lacking in sufficiency, much less afford an opportunity to the Petitioner to rectify/cure the same. It was thus that he submitted that the Controller had acted contrary to the mandate of Sections 14 and 15 of the Patents Act by dismissing the said Application on the ground of “insufficient disclosure” without ever specifying the nature of the insufficiency or communicating it to the Petitioner.

B. Cryptic and Unreasoned Order

5. Mr. Shetty then submitted that any order rejecting a patent application must contain a clear and reasoned link between the prior art references relied upon and the claimed invention. He submitted that the Controller was required to identify the existing state of knowledge i.e. the prior art and explain how a person skilled in the art would be able to arrive at the claimed invention based on such prior art, or to demonstrate why the invention lacked inventive step or sufficiency. He submitted that rejection of an application for patent in the absence of such clear and cogent reasoning would render such refusal as arbitrary. In support of his contention, he placed