It is a well-established legal principle that an order shall be a reasoned and speaking order, i.e., it shall clearly explain the reasoning for arriving at the decision. The Courts have recently been continuously emphasising this requirement, particularly in appeal matters filed against refusal orders issued by the Indian Patent Office (IPO). One such judgement was in Man Truck Bus Se vs Assistant Controller of Patents and Designs that came before the Hon’ble High Court of Delhi. This judgement further deals with the validity of the citation of new prior art documents by the IPO during the Hearing of a patent application and also acknowledges the relevance of the prosecution history of the corresponding foreign applications during the Indian prosecution.
This matter was basically an appeal filed under Section 117A of the Patents Act against the refusal order issued by the Assistant Controller of Patents and Designs (respondent) for patent application number 1241/DEL/2009, titled “Particle separator and method for separating particles out of an exhaust stream of an internal combustion engine”.
The appellant argued that the impugned order effectively duplicated the reasoning for the relevance of D1-D4 from the First Examination Report (FER), which indicates non-application of mind by the Controller while issuing the impugned order. The narration given for D1-D4 in the first part and the later portion of the impugned order are also identical, reaffirming this notion.
For the cited prior arts, the appellant argued that while documents D1-D4 were cited in the FER and the Hearing notice, document D5 was cited only during the Hearing by the Controller. This was strongly objected to by the appellant, citing the violation of the principles of natural justice qua the appellant. However, D5 was still relied upon in the impugned order for rejecting the patent application. The appellant also cited the decision in Perkinelmer Health Sciences Inc & Ors V. Controller of Patents, where this Court held that the Controller was not permitted to raise new grounds of objection at the Hearing. It is unacceptable and violative of the principles of natural justice that the applicant was not provided with a reasonable opportunity. This is regardless of whether the applicant provided a submission for any new document cited during the Hearing.
Moreover, the impugned order does not have any analysis to establish the obviousness of the invention and was therefore unreasoned. To further augment their arguments, the appellant cited Agriboard International, where the Court held that the Controller must analyse the existing knowledge and how the persons skilled in the art would move from the existing knowledge to the subject invention. If such analysis is not presented, the rejection of the patent application would be contrary to the provision of Section 2 (1)(j) of the Patents Act, 1970.
Regarding the foreign prosecution history, the appellant argued that the Controller did not consider the grant of the corresponding applications in other jurisdictions when arriving at their decision. The prior art documents D1, D3, and D5 had already been considered and rejected by the US Patent Office while granting the corresponding US Patent No.7850934B2. This fact was also brought to the attention of the Controller through the appellant’s submission, but the Controller did not consider this while passing the impugned order. The appellant also cited Otsuka Pharmaceutical Co. Ltd. v. The Controller of Patents, where the Court held that the Controller should have considered the grant of the corresponding foreign applications in arriving at their decision.
On the other hand, the respondent argued that the application was refused based on the cited prior art documents D1-D5. None of these documents were mentioned in any other jurisdiction where the patent had been granted. The respondent also argued that the prior arts were relevant for examination by the IPO, and grants in other jurisdictions may not be relevant for consideration. It does not automatically entail that the application in India would also be granted since patent rights are territorial, and the patentability criteria are unique to the jurisdiction. Regarding the citing of D5 only during the Hearing and in the impugned order, the respondent submitted that the Controller had rightly relied upon D5 to conclude that a technical person skilled in the art could come up with the invention.
Before getting into the details of the present matter, the Court, in their order, enunciated the learnings from the relevant case laws referred by both parties. The Court then stated that the absence of any discussion and analysis before rejecting the patent application violates principles of natural justice. This was reiterated by this Court in Auckland Uniservices Limited v. Assistant Controller of Patents. The Court also relied on F. Hoffman-La Roche and Agriboard International.
In the present case, the Court noted that the FER and the Hearing notice had cited 4 prior art documents, D1-D4, for the ground of lack of inventive step. The appellant had also argued in their response to the FER that the corresponding European and US patents have been granted with claims of substantially the same scope as those filed in India after considering D1, D3, and D4. Moreover, document D5, considered by the Controller in arriving at his decision in the impugned order, was not cited in any office actions. In this document, the Controller cited D5 during the Hearing, which was recorded by the appellant in their Hearing submission. In fact, while the appellant provided their arguments against D5 in the hearing submission, they also protested the citing of this new document at such a late stage of the proceedings.
Coming to the impugned order, the Court observed that the Controller had not provided any additional analysis in response to the appellant’s arguments for D1-D4. The analysis of D1-D4 in the impugned order is a mere repetition from the FER, without any addition or supplementation whatsoever. Although the Controller did articulate three features of the claimed invention in the impugned order, he did not address D1-D4, particularly in response to the arguments presented by the appellant for these documents in their submissions to the IPO. Moreover, while D5 was not even cited in the FER or the Hearing notice and was cited only during the Hearing, the Controller relied on it in arriving at this decision in the impugned order.
Considering this, the Court held that the impugned order is erroneous as it does not provide sufficient analysis of D1-D4 to establish that the present invention is obvious. Further, D5 appears to form the basis of the conclusion of the Controller in the impugned but was never cited in the FER or the Hearing notice. Therefore, it violates the principles laid down in Otsuka Pharmaceutical Co., Agriboard International, and PerkinElmer Health Sciences, where it was reiterated that the Controller’s order could not be unreasoned. If it does provide reasons, it still cannot circumvent communicating the objection of prior art in the Hearing notice. The Court acknowledged that not providing any such opportunity would put the appellant at a severe disadvantage at the stage of Hearing.
The Court, without going into the merits of the issues arising out of D1-D5, held that the impugned order is vitiated as the Controller did not cite document D5 in the Hearing notice and did not even provide sufficient analysis for documents D1-D4 therein. The Court consequently set aside the impugned order and remanded the matter to the IPO for further consideration. The Court further directed that the Controller may also consider the prosecution history of the appellant’s corresponding patent applications in other jurisdictions.
This judgement reiterates the importance of giving the applicant a reasoned and speaking order by the IPO. Especially in an adverse order, the applicant must be provided with sufficient details and an explanation of the reason for the refusal of the application. Moreover, this judgement reaffirms that the responsibility of giving adequate opportunity to the applicant to respond to an objection cannot be ignored under any circumstances. The Controller cannot raise a new objection during the Hearing, regardless of whether the applicant provides arguments in their submission. Further, the Court acknowledged the importance of granting the corresponding foreign applications in the Indian prosecution.
As this judgement addresses multiple pressing issues that the applicants face, it may serve as a guiding light for the applicants in successfully addressing these issues while prosecuting their applications before the IPO. More importantly, such encouraging judgements by the Courts, along with the vigorous efforts being made by the IPO in smoothening the overall process, would act as a strong motivation for the applicants to file more in India, in turn developing a robust, firm, and, comprehensive IP framework in the country.
Authors: Manisha Singh and Piyush Sharma
First Published by: Lexology Here