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C.A.(COMM.IPD-PAT) 435/2022

ALFRED VON SCHUKMANN vs THE CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS AND ORS

The current appeal was filed under Section 117-A (Appeals to Appellate Board) of the Patents Act, 1970 impugning the order on 3rd August, 2017 passed by the Assistant Controller of Patents in Indian Patent Application No.3845/DELNP/2007 filed on 10th May, 2007 for the invention titled “Step-Action Indexing Mechanism” (the invention). Appeal before the HON’BLE MR. JUSTICE AMIT BANSAL. 

FACTS OF THE CASE

The appellant had filed the patent application on 10th May, 2007 at the Patent Office, New Delhi. This application was filed as a national phase application under the Patent Cooperation Treaty (PCT) claiming priority date of 10th November, 2004.

The Patent Office issued a First Examination Report (FER) on 22nd November, 2013 and raised various objections, particularly relating to lack of novelty and inventive step in terms of Section 2(1)(j) (“invention” means a new product or process involving an inventive step and capable of industrial application) of the Patents Act, 1970.

The Appellant had filed a response to the FER where he distinguished the subject invention from the prior art. Later on, various hearing notices were issued by the Patent Office to the appellant. Here, once again an objection was taken with respect to lack of inventive steps in view of the prior art, D1, D2 and D3.

The appellant filed a written submission on 15th May, 2017 dealing with the prior art cited by the Patent Office and explained how the subject invention is discernible from the prior art. It was also stated that the subject invention has been granted patent in China, Mexico, Canada, USA and EPO.

The learned council for the appellant submits that after the detailed submissions were made on behalf of the appellant in response to the FER as well as the written submissions (for the subject invention has been distinguished from the prior art), the Patent Office has passed a cryptic order without dealing with any of the submissions made on behalf of the appellant. 

The learned council for the appellant relied on the judgment of a Co-ordinate Bench of this Court in International LLC v. Deputy Controller of Patents and Designs, 2022 SCC

OnLine Del 940 and the judgment dated 27th September, 2022 in C.A. (COMM-IPD-PAT) 8/2022 titled Auckland Uniservices Limited v.Assistant Controller of Patents and Designs to submit that the Patent Office is required to pass a speaking order analyzing what is the existing knowledge and how the subject invention lacks inventiveness in light of the subject art.

Counsel appearing on behalf of the respondent submitted that the appellant has failed to provide any justification or grounds for distinguishing the subject invention from the prevailing prior art. He further contends that the additional grounds have been taken in the appeal which were not a part of the written submissions mentioned earlier.

JUDGEMENT

The Court relied on the judgment of the Apex court in Manohar v. State of Maharashtra & Ors. AIR 2013 SC 681 wherein it has been categorically observed that application of mind and recording of reasoned decisions are the basic elements of natural justice. The Court stated that there can be no doubt that scrupulous adherence to these principles would be required while rejecting patent applications.

The Court stated three elements that the Controller has to consider while rejecting an invention for lack of inventive step:

• The invention disclosed in the prior art,
• The invention disclosed in the application under consideration, and
• The manner in which subject invention would be obvious to a person skilled in the art.

The Court stated that despite the mentioned submissions of the applicant seeking to distinguish the prior art from the subject invention, the impugned order has been passed in a cryptic manner without going into the explanation offered on behalf of the appellant with regard to the prior art. 

The Court stated that the impugned order is completely cryptic and does not give any reasoning or justification to arrive at the finding that the claims of the appellant lack inventive steps. Therefore the order in dispute dated 3rd August, 2017 rejecting the patent application of the appellant is set aside and the matter is remanded back to the Patent Office for fresh consideration. 

The Court in the current case stated that in order to remove the possibility of any apprehension of pre-determination, it deemed it necessary that the matter be placed before an Officer other than the Officer who has passed the impugned order. Such officers should pass a reasonable order taking into account all the relevant considerations within four months.

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JUDGEMENT REVIEWED BY ADITYA G S.

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