JUDGMENT

TEJAS KARIA, J

INTRODUCTION

1. This is an Appeal filed under Section 117A of the Patents Act, 1970 (“Act”) seeking quashing and setting aside of orders dated 11.10.2019 (“Impugned Order I”) and 05.03.2020 (“Impugned Order II”) passed by the Assistant Controller of Patents and Designs (“Respondent / Controller”) under Section 15 of the Act (“Impugned Orders”) refusing the Patent Application No. 1976/DEL/2008 filed on 20.08.2008 titled as “COLOUR DIFFERENTIATING A PORTION OF A TEXT MESSAGE SHOWN IN A LISTING ON A HANDHELD COMMUNICATION DEVICE” (“Subject Application”).

FACTUAL MATRIX

2. The Subject Application claims priority from European Patent Application No. 07117003.9 filed on 21.09.2007 (“EP Application”). The Subject Application and the request for examination for the same was filed on 20.08.2008. The Subject Application was published under Section 11(A) of the Act on 17.04.2009.

3. The Subject Application was examined, and First Examination Report was issued on 10.09.2014 (“FER”). The substantial objection raised in the FER relates to the claims lacking novelty under Section 2(1)(j) of the Act in view of the document EP1767008 (A1) (“D1”). The documents US6671718B1 (“D2”) and US2003/0084109A (“D3”) were cited as relevant documents. The claims were also objected under Section 3(k) of the Act for falling within the scope of computer program.

4. In response to the objections raised in the FER, the Appellant’s Agent submitted the response via their letter dated 01.05.2015, uploaded on the portal on the Patent Office on 05.05.2015 (“Reply”). Thereafter, a hearing notice dated 06.08.2019 (“Hearing Notice I”) scheduling a hearing for 21.08.2019 (“Hearing I”). During the Hearing I, the Respondent raised an oral objection under Section 3(k) of the Act and directed the Agent for the Appellant to present submissions with respect to Section 3(k) of the Act. The post-Hearing I written submissions were filed by the Appellant on 04.09.2019 (“Written Submissions I”).

5. Thereafter, the Respondent via the Impugned Order I, refused the Subject Application. On 11.11.2019, the Appellant filed a review application (“Review Petition”) under Sections 77(1)(f) and 15 of the Act against the Impugned Order I. The Respondent issued a hearing notice dated 22.01.2020 (“Hearing Notice II”) scheduling a hearing for 10.02.2020 (“Hearing II”). The post-Hearing II written submissions were filed by the Appellant on 25.02.2020 (“Written Submissions II”).

6. The review application was dismissed vide the Impugned Order II. Hence, the Appellant has filed the present Appeal seeking to set aside the Impugned Orders and grant of the Patent under the Subject Application.

SUBMISSIONS ON BEHALF OF THE APPELLANT

7. The learned Counsel for the Appellant made the following submissions:

7.1. The Appellant is a corporation organized and existing under the laws of Ontario, Canada. The Appellant specializes in providing telecommunication solutions including, but not limited to, enterprise software and Internet of Things. The Appellant is well known as a former developer of the BlackBerry brand of smartphones and tablets and its products are used worldwide by various businesses, car makers, and government agencies.

7.2. The present invention relates to the field of handheld wireless communication devices. The handheld devices have a very small screen size compared to standard desktop where users can implement filters or otherwise easily distinguish recipients. The handheld devices require user interfaces created for limited screen size, through which users input and perform sophisticated operations including sending messages. Considering the limited amount of information that can be displayed on handheld devices, the handled devices require UIs that allow users to easily and quickly distinguish intended recipients in an outgoing message and prevent re-sending of messages to correct recipients. The quick visual identification of any unintended recipients reduces the