While adjudicating on patentability for an invention titled “A Comforter System Having an Application in Conjunction with a Supporter”, the Delhi High Court has ruled that a failure by a quasi-judicial authority, such as the Controller of Patents, to consider all technical and substantive submissions made by an applicant constitutes a violation of the principles of natural justice. Such a “patent infirmity” is a jurisdictional error that vitiates the authority’s decision, warranting the order to be set aside.
Furthermore, the Court clarified that the procedural fairness, in conformity with the spirit of Section 13(3) of the Patents Act, may require that an applicant be given a comprehensive account of all objections (such as through a Second Examination Report) before a final decision is made, especially when new grounds of objection are raised after the initial examination report. The Court, therefore, remanded back to the respondent (Controller of Patents) for fresh consideration.
A Single Judge Bench of Justice Tushar Rao Gedela observed that the impugned order was vitiated by a jurisdictional infirmity and patent infirmity as it failed to consider the appellant’s detailed technical reply, which was a comprehensive rejoinder to the objections raised in the first hearing notice concerning prior art documents. The Bench noted that the impugned order only acknowledged the submissions from the reply, exhibiting a “conspicuous failure to advert to the submissions canvassed in the reply”, which amounts to a denial of natural justice.
The Bench pointed out that the new prior art documents were introduced for the first time in the hearing notice, not in the FER as they should have been. Further, the second hearing notice only referred to document D-3, giving the inference that the Controller had “implicitly acquiesced to the appellant’s contentions on novelty” which was raised in the FER. Thus, there was a contradiction regarding the closest prior art; the FER identified D-1, whereas the impugned order stated D-3 was the closest.
The Bench found that the Controller had wrongly interpreted prior art D-3. The impugned order stated that in D-3, “any of the compartments can be positionally re-arranged at a time,” which the Bench found to be contrary to the record. The Bench observed that Figure 12 of D-3 shows sacks in a linear and parallel array, with no scope for disconnection or special arrangements, unlike the appellant’s invention which allows for arrangement in “any spatial manner including possible multilayer stacking”.
The Bench deliberated on Second Examination Report (SER). While acknowledging that the Patent Act and Rules do not explicitly provide for an SER in such cases, it opined that for quasi-judicial proceedings, “procedural fairness may require that an SER be furnished to an applicant on a case-to-case basis.” This would ensure that an applicant can meet all objections in a composite manner, which would be in conformity with Section 13(3) of the Act.
Briefly, the appellant, Jesal Vimal Jetha, filed Patent Application for an invention titled “A Comforter System Having an Application in Conjunction with a Supporter”. The invention is a therapeutic comforter system designed to provide customized support to users in various settings, addressing issues like backache and improper posture by allowing for manual or electronic adjustment of its components.
The First Examination Report (FER) was issued raising objections based on prior art documents D-1 and D-2. Later, the Controller of Patents passed an order refusing the patent application on the ground that the objection under Section 2(1)(ja) of the Patents Act, 1970 (lack of inventive step) was not met.
Appearances:
Advocates Deepshikha Malhotra and Dhavish Chitkara, for the Appellant
CGSC Arunima Dwivedi, along with Advocates Priya Khurrana and Himanshi Singh, for the Respondent
