The main legal point established is the requirement for proper reasoning in patent rejection orders, emphasizing the principles of natural justice and the need for objective criteria in decision-making.

ORDER

I.A. No........./2023 (to be numbered)

1. Registry is directed to number the afore-noted application.

2. Considering the fact that there has been only a short delay in filing the present appeal, application is allowed and the delay is condoned.

3. Disposed of.

C.A.(COMM.IPD-PAT) 301/2022

4. Petitioner's Indian Patent Application No. 2170/DEL/2008 for the invention "Text Selection Using a Touch Sensitive Screen of a Handheld Mobile Communication Device" [hereinafter, "subject invention"], was filed on 16th September, 2008, claiming priority since 26th October, 2007 from a corresponding European application. [European Application No.: 07119388.2.] First Examination Report was issued on 28th August, 2014, to which, Appellant responded on 13th March, 2015. Hearing was scheduled after four years on 23rd October, 2019, whereafter, vide order dated 23rd June, 2020, the Assistant Controller of Patents and Designs refused the application under section 15 of the Patents Act, 1970 [hereinafter, "impugned order"].

5. As nearly three-quarters of the twenty-year patent term have expired, the Appellant is confronted with a scenario in which, even if the questioned order were to be nullified, their battle continues. They must re-engage with the patent office to establish their invention's validity in order to secure a patent.

6. Having set out the chronology of events, let us briefly take note of subject invention and `grounds' for rejection in the impugned order. Subject invention, comprising of 23 claims, is a method and system for facilitating character/text selection by a user on touch screen of a handheld device where displayed characters available for selection are small enough that user contact with the screen is capable of overlapping a plurality of simultaneously displayed characters. It is intended to provide for accurate control for selection of text/icons displayed on the touch screen.

7. The impugned order rejecting the application, has been structured as follows:

7.1. It begins noting the procedural history of the application. Then, in paragraph No. 2, the Assistant Controller reproduces the objections entailed in the hearing notice. Paragraph No. 3 records that Appellant's agent attended the hearing on 23rd October, 2019 and submitted written submissions on 27th November, 2019.

7.2. Paragraph No. 4 is devoted to summarising the invention and the succeeding sub-paragraphs, record the points on which Appellant laid emphasis:

"4. I now turn my attention to the claimed subject matter. The alleged invention is summarized as follows:

A system and method is disclosed that provides for character or text selection and editing. The text and character selection is made by user contact with a touch sensitive screen. In order to allow for refinement of the selection, a second expanded view is implemented as compared to the original display configuration of the screen. Furthermore, the selection is described in relation to two endpoints of the block of text. Additionally, a point is specified as the point desired for insertion of the selected text. The expanded view is implemented along with the original view as required when making character selection.

Applicant has also emphasized on following points in submitted reply document:

1. Present invention provides technical effect in terms of providing an efficient system of selection of text without compromising with storage capacity and thus, making the system more robust and resource effective. It is submitted that therein lies a technical effect of the invention.

2. The method claims do not refer to an executable list of defined instructions at all and they do not claim a logical, arithmetical or computational method at all. Accordingly, the method claims of the present application do not fall within the scope of 3(k) as defined in the Manual of Patent Practice and Procedure."

7.3. In the subsequent paragraph (No. 5), it is mentioned that Assistant Controller was unpersuaded by Appella