The Delhi High Court has held that while rejecting a patent application for lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, the Controller must render a reasoned order by discussing the invention disclosed in the prior art, the invention disclosed in the application under consideration, and the manner in which the subject invention would be obvious to a person skilled in the art.
A bare conclusion, unsupported by such analysis and consisting merely of reproduction of prior art extracts, violates the requirement of reasoned adjudication by a quasi-judicial authority and cannot be sustained in law, added the Court, while quashing the impugned order, and remitted the matter of Patent Application of Nippon Steel for de novo consideration by another Assistant Controller/Controller, within four months.
A Single Judge Bench of Justice Tushar Rao Gedela observed that the impugned order, under the heading “SCIENTIFIC AND TECHNICAL ANALYSIS”, extensively extracted portions from prior art documents D1, D2 and D3, but the analysis was bereft of application of mind and did not disclose reasons sufficient to sustain the conclusion reached by the Controller.
The Bench noted that, other than reproducing the contents of the cited prior art documents, the Controller had effectively decided the application in a single conclusory paragraph stating that the amended claims lacked inventive step under Section 2(1)(ja) of the 1970 Act. Although the order recorded that the applicant’s responses and submissions had been fully considered, there was no reference to or discussion of those submissions in the reasoning portion of the order.
The Bench further observed that the Controller, being a quasi-judicial authority, was required to pass a reasoned order for either acceptance or refusal of the patent application. An order containing no reasoning could not form the basis of a valid decision of this nature. On that ground, the Bench held the impugned order to be unsustainable in law.
The Bench also took note of its earlier decision in Agriboard International LLC. v. Deputy Controller of Patents and Designs [C.A. (COMM.IPD-PAT) 4/2022], decided on March 31, 2022, and observed that while dealing with an objection of lack of inventive step under Section 2(1)(ja), the Controller has to discuss: (i) the invention disclosed in the cited prior art, (ii) the invention disclosed in the application under consideration, and (iii) the manner in which the subject invention would be obvious to a person skilled in the art.
Briefly, the appellant had challenged an order dated May 26, 2020, whereby the Controller refused patent application no. 10182/DELNP/2012. The subject application arose from a Japanese application filed on May 25, 2010, followed by a PCT international application filed on May 19, 2011, and the Indian application filed on November 23, 2012.
The request for examination was filed on November 26, 2012, and the First Examination Report dated June 01, 2018 raised objections including lack of novelty, lack of inventive step, lack of industrial applicability, lack of unity of invention, lack of sufficiency of disclosure, objection under Section 3, and issues relating to scope and definitiveness.
The appellant replied to the First Examination Report on October 25, 2018. Thereafter, a hearing notice dated January 03, 2020 fixed the hearing for February 04, 2020, and post-hearing written submissions were filed on February 18, 2020. By the impugned order dated May 26, 2020, the Controller refused the application under Section 15 of the Patents Act on the ground of lack of inventive step under Section 2(1)(ja) of the 1970 Act.
Appearances:
Advocates Vineet Rohilla and Rohit Rangi, for the Petitioners
SPC Sumit Nagpal, along with Advocates Tanmay Saini and Kunal Khurana, for the Respondents
