The High Court of Calcutta, while disposing of an appeal filed under Section 117A of The Patents Act, 1970 against the order passed by the Deputy Controller of Patent and Designs wherein the post-grant opposition filed by the appellant for revocation of a patent was refused, held that if the Patent Office’s orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. This makes the decision arbitrary, suggesting a subjective determination without any objective criteria.
Brief Facts:
The respondents had made an application for its invention titled “SYSTEM/ DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS”. The said application was granted with a patent over 10 claims. An application for the cancellation of the patent filed by the appellant was rejected. Hence, the present appeal.
Contentions of the Appellant:
The Learned Counsel for the Appellant submitted that the respondent claimed monopoly for a method and a system that were publicly known and were already in use at the time of priority date, due to which such claims are not patentable subject matter in India. He argued that the appellant, who has been in the industry for a much longer time than the respondent, has dealt with multiple products and components thereof which clearly map upon and overlap with system Claim 5 of the impugned patent.
Contentions of the Respondent:
The Learned Counsel for the Respondent submitted that as per Order XLI Rule 25 of the Code of Civil Procedure, 1908, the matter is to be remanded to the same authority that has passed the impugned order. He argued that when a statute directs that an appeal shall lie to a court already, established, then that appeal must be regulated by the practice and procedure of the Court.
Observations of the court:
The court noted that the Deputy Controller passed the impugned order, recording the submissions and written arguments of the parties as well as the observations of the opponent.
The Court observed that the Deputy Controller ought to have disclosed reasons to support his conclusion. If the Patent Office’s orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. The Court said that the crux of the issue is a lack of reasoning supporting the final decision, a task of which the Deputy Controller has completely fallen short. This makes the decision arbitrary, suggesting a subjective determination without any objective criteria. Such kinds of mechanical, template, and cut-and-paste orders cannot be sustained and must be strictly discouraged.
The Court said that the Registrar of Trade Mark is not a Civil Court. Section 100A of the Civil Procedure Code, 1908 is confined to a second appeal. The bar would only operate where a decree or appeal was preferred before the Single Judge of a Civil Court. In the present case, the impugned order was passed by the Deputy Controller under the Patent Act and thus the Order XLI Rule 25 is not applicable in the present case.
The decision of the Court:
The Calcutta High Court, disposing of the appeal, held that the impugned order passed by the Deputy Controller of patent and design is set aside, and the matter is remanded for reconsideration.
Case Title: Terex India Private Limited vs. CDE Asia Ltd. & Anr.
Coram: Hon’ble Chief Justice Krishna Rao
Case No.: IPDAID 4 of 2024
Advocate for the Appellant: Mr. Akhil Sibal
Advocate for the Respondent: Mr. S.N. Mookherjee and Mr. Swatarup Banerjee
Read Judgment @LatestLaws.com
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