Order Reserved: Pronouncement Of Decision Not To Go Beyond Six Months

Order Reserved: Pronouncement Of Decision Not To Go Beyond Six MonthsThe Patents Acts in all jurisdictions have strict timelines. Missing the statutory times by the applicant leads to adverse consequences like the application being deemed to have been abandoned (section 21 of Patents Act 1970) or considered to have been revoked if no reply is forthcoming from the patentee in opposition( Rule 58 (2). This is basically done to give finality to the grant of right or otherwise within the limited term of the patent for twenty years. The number of contested cases is growing, and so is the hearing conducted by the Controller. In most of the cases where the Controller conducts a hearing under Rule 62, the orders are reserved by the Controller. There is no statutory time limit for the Controller to pass a written order, and it is not unusual for the Controller to reserve judgment.

At the end of the hearing, the Controller will usually state that judgment is being reserved. The parties to the proceeding are also permitted to give written statements within 15 days from the date of the hearing. The practice of reserving decisions is prevalent in every patent office. In patent cases, the reason for reserving the judgment is attributed to the technical complexity of the subject matter of the invention in question. In patent disputes, reserving judgment means that the argument of both counsels has been heard by the Controller.

The Controller will deliberate upon the matter, decide the merits of the arguments and the submissions of both counsels and pass the order. It is expected that when judgment has been reserved at the end of a hearing by the Controller, a written judgment should be sent to the parties as soon as practicable. A reserved judgment are being released in days, weeks, or even months after the hearing.

In some cases, it is forthcoming even after many years. Though Rule 55(6) sets a limit of one month in the pre-grant opposition, in Rule 66(5) in the post-grant hearing, no such time is stipulated in the rules. In the absence of statutory time limits in the Patent Act and Rules, such delays are considered normal by the patent office, and the practising attorneys in soft murmur do question such delay by the Controller. For the first time, in Procter and Gamble Co. v. Controller of Patents and Designs, [C.A.(COMM.IPD-PAT) 268 of 2022, decided on 08-12-2023] it was reported to the Delhi High Court that the Controller decision was written after four years from the date of conducting the hearing.

Reserved Judgment or reserved decision

The term ‘judgment’ is freely used to refer to decisions of a quasi-judicial body and administrative bodies like the Patent office. Though colloquially referred to as “judgments”, the decisions of quasi-judicial or administrative bodies might not be referred to as judgments. These decisions can be distinguished from judgments made by judges in a court of law. The practice of reserving an order or judgement by the Controller has its roots in practice adopted by Courts in complex matters. In such cases, judges reserve judgment or reserve decisions after the conclusion of the hearing or trial.

A reserved judgment may be released days, weeks, or even months after the hearing. If we see the provisions of Rule 1(1) of Order XX of the Civil Procedure Code, we will find that it mandates that the Court shall pronounce judgment either at once or as soon as practicable within 30 (thirty) days from the date on which the hearing of the case was concluded. This period can be extended beyond 60 (sixty) days only under exceptional and extraordinary circumstances. However, the timely disposal of cases in the patent office depends on several factors, including the availability of an adequate number of Controllers, supporting court staff and physical infrastructure, the complexity of facts involved and the nature of technical evidence.

It is not uncommon to find voluminous evidence and citations submitted to the Controller by contesting parties during the hearing. Given the situation stated above, the Controller’s reserving the order in complex cases is justified. However, an inordinate delay in passing the order without proper justification is unreasonable and needs to be addressed judicially. In Procter and Gamble Co. v. Controller of Patents and Designs, [C.A.(COMM.IPD-PAT) 268 of 2022, Justice Prathiba addressed this issue and directed IPO in clear terms:

“Though no specific time period has been prescribed for passing of orders C.A.(COMM.IPD-PAT) 268/2022 after concluding oral hearings, the Patent Office is expected to pass the same within a reasonable period. Such a reasonable period cannot be beyond three to six months in any case, depending on the complexity of the case.

Position of Delayed Judgment in Courts 

The Supreme Court addressed the issue of delay in the passing of judgment as early as 1976. The Apex Court made an exhortation through a judgment in  R.C. Sharma v. UOI 1976 (3) SCC 574 for expediting the delivery of judgments in these words as follows:

Nevertheless, an unreasonable delay between hearing of arguments and delivery of judgment, unless explained by exceptional or extraordinary circumstances, is highly undesirable even when written arguments are submitted. It is not unlikely that some points which the litigant considers important may have escaped notice. But, what is more important is that litigants must have complete confidence in the results of litigation. This confidence tends to be shaken if there is excessive delay between hearing of arguments and delivery of judgments.”

Again, in Anil Rai v. State of Bihar – (2001) 7 SCC 318, Justice Sethi observed that:-

“It has been held time and again that justice should not only be done but should also appear to have been done. Similarly, whereas justice delayed is justice denied, justice withheld is even worse than that.

Concurring with Justice Sethi, Justice Thomas went to the extent of saying that:

“Regarding the aspect of delay in pronouncing judgments after the conclusion of arguments, I wish to add a few words on my own in support of all that Sethi, J. has said about it.

  1. In 1961, a learned Judge of the Patna High Court expressed his anguish when a Magistrate took nine months to pronounce a judgment. The words he used to express his judicial wrath are the following:

“The Magistrate who cannot find time to write judgment within a reasonable time after hearing arguments ought not to do any judicial work at all. This Court strongly disapproves the Magistrates making such a tremendous delay in the delivery of his judgments.”

In this case it has been observed that if a judgment is not pronounced within a period of six months, it should be placed before another Bench for fresh arguments.

Looking Forward

Coming back to a position of delay in delivery of the decision in the Patent office after the hearing, Justice Prathiba not only set aside the decision issued after four years but also directed the Controller General to allow this case to a different Controller for re-hearing afresh. Without giving any reference to Supreme Court judgements as discussed, Justice Prathiba directed that after concluding oral hearings, the Patent Office is expected to pass the same within a reasonable period. Such a reasonable period cannot be beyond three to six months in any case, depending on the complexity of the case.

Though Justice Pratibha fell short of saying that if a decision is not passed within a period of six months after the completion of the hearing, it should be placed before another Controller for fresh hearing yet the message, in this case, was loud and clear the appeal courts would not hesitate to issue such directions in future. It is expected that CGPDTM will take note of this Court observation and issue necessary instructions for the Controllers to strictly comply. This decision would go a long way in putting a check on such delays in the future.

Author: DPS Parmar

First Published by: Mondaq here