Protean Electric Ltd vs The Controller Of Patents And ...
2023 Latest Caselaw 896 Cal/2

                       IN THE HIGH COURT AT CALCUTTA
                           SPECIAL JURISDICTION
                                ORIGINAL SIDE


BEFORE:
The Hon'ble Justice Ravi Krishan Kapur


                             AID NO. 15 OF 2022

                              IN THE MATTER OF
                             PROTEAN ELECTRIC LTD
                                     VS
                    THE CONTROLLER OF PATENTS AND DESIGNS


For the Appellant               : Mr. S. Majumdar, Adv.
                                  Mr. Paritosh Sinha, Adv.
                                  Mr. K. K. Pandey, Adv.
                                  Mrs. Mitul Dasgupta, Adv.
                                  Ms. Enakshi Saha, Adv.

For the Defendant              : Ms. Rini Bhattacharya , Adv.
Reserved on                     : 19.1.2023

Judgment on                     : 06.04.2023

Ravi Krishan Kapur, J.:


   1. This is an appeal under section 117A of the Patents Act 1970 (the Act)

      assailing an order dated 8 April 2022 passed by the Controller of

      Patents (the order).

   2. The appellant had filed Patent Application No 1023/KOLNP/2014 on

      13 May 2014 (the subject application) before the Indian Patent Office

      claiming priority from 19 October 2011 in the National Phase Entry in
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   India    for   an    invention     titled     "AN   ELECTRIC     MOTOR      OR

   GENERATOR".

3. The     appellant   is   engaged    in      providing   automotive   technology

   specializing in "in-wheel motor technology" which includes an in-

   wheel, electric-drive system for hybrid, plug-in hybrid and battery

   electric vehicles. The appellant has a global presence. Patent

   applications have been filed and granted in various jurisdictions for

   the subject invention.

4. Briefly, the subject invention relates to an electric motor or generator

   comprising of a rotor having a first set of magnet poles; a stator

   having first sensor mounted on the stator and a second sensor

   mounted in a substantially diametrically opposite position on the

   stator relative to the first sensor. The first sensor is arranged to

   output a first signal indicative of a first rotor flux angle associated

   with the first set of magnet poles as the rotor rotates relative to the

   stator. The second sensor is arranged to output a second signal

   indicative of a second rotor flux angle associated with the first set of

   magnet poles as the rotor rotates relative to the stator. Necessary

   means are arranged to determine a corrected rotor flux angle by
                                    3


  averaging the first rotor flux angle indicated in the first sensor and the

  second rotor flux angle indicated in the second sensor.

5. It is contended that the subject invention has the advantage of

  allowing the correlation between the commutation magnets and the

  drive magnets to be more accurately determined, thereby allowing the

  accuracy of an electrical phase angle determination to be increased

  with a resulting increase in operating efficiency of an electric motor or

  generator. An electric motor uses magnets to create motion and this

  motion is the initial source of energy for the engine. In the subject

  invention, two types of magnets are used namely the commutation

  magnets and drive magnets. This feature provides the technical

  advancement of allowing the correction between the commutation

  magnets and drive magnets to be more accurately determined, thereby

  allowing the accuracy of the electrical phase angle determination to be

  increased with a resulting increase in operating efficiency of an

  electric motoror generator avoiding the errors like loss of torque,

  torque ripple and acoustic noise decreasing the efficiency of electric

  motor. The subject invention helps improve the driving experience and

  generates more power as power goes straight from the motor to the

  wheel.
                                       4


6. It   is   alleged   that   the   respondent   authorities   have   unduly

procrastinated the process of examination. After a delay of almost 5

years, the First Examination Report (FER) was issued on 7 January

2019. The response to the FER was filed by the appellant on 3 July

2019. The matter was fixed for hearing on 10 August 2021.

Thereafter, the date of hearing was repeated adjourned and finally the

publication, examination and re-examination were completed after a

delay of almost 8 years. There has been no compliance with the

prescribed timelines as stipulated under the Act or the Rules framed

thereunder. The entire process of examination has been marred by

delay. The requests for multiple examinations and unnecessary

requests for amendments are also unjustified and unwarranted.

7. It is also alleged that the Controller in the FER unjustifiably

recommended changes with reference to a prior art D1 being

US2008025858A1 dated 3 May 1984. Nevertheless, the appellant had

responded to the FER on 3 July 2019 and also filed an amended

application to deal with the objections raised in the FER. It is further

alleged that the respondent authorities have failed to consider the

response to the objections raised by them and mechanically forwarded

the application for fresh investigation and re- examination instead of

approving the patent. It is also alleged that being unable to make out

a case against the appellant's response to the FER, the respondent

authorities raised further objections in the hearing notice with

reference to 2 other documents being D2 and D3 despite all the

amendments having been made in terms of the suggestions in the

FER. All these actions unduly delayed the entire examination process.

8. It is also alleged that the Controller failed to appreciate and consider

the difference between the claim of novelty and lack of inventive steps.

The objections on the ground of lack of novelty and lack of inventive

steps could not have coexisted having regard to the same prior art

document being D1.

9. Section 14 and 15 of the Act read as follows:

"14. Consideration of the report of Examiner by Controller.-- Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.

15. Power of Controller to refuse or require amended applications, etc., in certain case.-- Where the Controller is

satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuses the application on failure to do so."

10. The primary grievance of the appellant is that the Controller of Patents

proceeded to re-examine the application of the appellant despite the

appellant having made all necessary amendments to the application in

view of the objections raised by the Controller of Patents. The

appellant also assails the raising of fresh citations being D2 and D3 in

the hearing notice against the amended application.

11. Significantly, clause 9.04 of the Manual of Patent Office Practice and

Procedure, provides that when an applicant re-files the documents

post amendment, the application must be examined in a fresh manner

by the Examiner and a Report with his observation must be forwarded

to the Controller of Patents upon further examination of such

application. If thereafter an application is found to comply with all the

requirements of the Act and Rules, the Controller is expected to grant

the patent.

12. From the provisions of the Manual, I find that the Controller has failed

and neglected to adhere to the procedure for consideration of a re-filed

application which is stipulated under the Act and Rules framed

thereunder. The re-examination of a re-filed application is a

mandatory procedure and the Controller was statutorily bound to

follow the same.

13. I also find that the examination request was filed on 20 September,

2014. The First Examination Report was issued on 7 January, 2019.

Despite affidavits, the respondent Controller has taken approximately

8 years to complete the entire process of examination. This is

unacceptable and renders nugatory the sprit and object of the Act.

There is also blatant violation of the statutory timelines provided

under Rule 24 B of the Patent Rules 2003 for examination which has

caused inordinate delay in the entire examination process. Moreover,

the process of examination and subsequent steps leading to disposal

of the application have been given a go-bye. The application had been

re-examined and further examination reports were not issued to the

appellant. The two new prior art documents cited in the hearing notice

are in violation of the mandate of section 13(3) of the Act and alters

the entire character of the examination.

14. Furthermore, the objection on the ground of novelty which inter alia

concludes that in view of the prior art D-1, the subject invention

lacked novelty and inventive steps also demonstrate non-application

of mind by the Controller. The tests to determine novelty and

obviousness are entirely different and can never co-exist with respect

to the same document. The novelty of an invention can be questioned

only when a single document which is prior published would contain

a clear description of the claimed invention and the manner in which

it has to be performed. In other words, when an objection is raised

under lack of novelty it implies that each and every feature of the

claimed invention is disclosed in a single prior art document and such

prior art also contains an enabling disclosure of the invention. On the

other hand, an invention shall not be considered to involve an

inventive step if it is obvious to a person skilled in art. In passing the

impugned order, the Controller has also disregarded the Written

Submissions filed by the appellant under Rule 28 (7) of the Patent

Rules 2003.

15. Moreover, in case where the Controller suggests or recommends

amendments in respect of any prior art, it is natural to assume that

the Controller is well versed with all such recommendations as

suggested so that the same do not coincide with any other prior art.

Upon the necessary amendments being carried out, in accordance

with the provisions of the Act and Rules, there is little room for further

re-examination and for raising of fresh citation. In other words, the

Controller ought to advice any applicant with a view to having the

application made eligible for grant of the patent rather than with the

aim of rejecting the same.

16. In this case, it is found that the necessary amendments as suggested

by the Controller were duly carried out by the appellant and thereafter

the application was re-filed for consideration. When an application is

rectified in conformity with the recommendations of the Controller, it

is fair to assume that such application would be allowed unless the

application filed by the applicant fails to satisfy the requirements of

the Act and the Rules framed thereunder. It is fundamental to the

scheme of the Act that suggestions for amendments should not be

made with a view to harass and persecute an applicant by raising new

prior arts simply to deny the right of the applicant of being granted a

patent as has been done in this case.

17. I find that the Controller of Patents erred in making unnecessary

recommendations on the basis of the FER dated 7 January 2019.

Moreover, there has been undue, inordinate and unexplained delay in

the matter by the office of the Controller which borders on being ill-

motivated.

18. The impugned order is also liable to be set aside on the ground that

the same is unreasoned. In The State Bank of India & Anr. Vs. Ajay

Kumar Sood 2022 SCC OnLine SC1067 it was held as follows:

"A judgment culminates in a conclusion. But its content represents the basis for the conclusion. A judgment is hence a manifestation of reason. The reasons provide the basis of the view which the decision maker has espoused, of the balances which have been drawn. That is why reasons are crucial to the legitimacy of a judge's work. They provide an insight into judicial analysis, explaining to the reader why what is written has been written. The reasons, as much as the final conclusion, are open to scrutiny. A judgment is written primarily for the parties in a forensic contest. The scrutiny is first and foremost by the person for whom the decision is meant - the conflicting parties before the court. At a secondary level, reasons furnish the basis for challenging a judicial outcome in a higher forum. The validity of the decision is tested by the underlying content and reasons. But there is more. Equally significant is the fact that a judgment speaks to the present and to the future. Judicial outcomes taken singularly or in combination have an impact upon human lives. Hence, a judgment is amenable to wider critique and scrutiny, going beyond the immediate contest in a courtroom. Citizens, researchers and journalists continuously evaluate the work of courts as public institutions committed to governance under law. Judgment writing is hence a critical instrument in fostering the rule of law and in curbing rule by the law."

19. I find from the impugned order that the same is bereft of any reason.

The impugned order simply arrives at conclusions without analysing

the relevant facts pertaining to the subject patent. In such

circumstance, the impugned order is unsustainable and liable to be

set aside.

20. In view of the aforesaid, AID 15 of 2022 stands allowed. The matter is

remanded back to the Controller for consideration afresh within a

period of three months from the date of this order and after giving a

right of hearing to the parties. It is made clear that the aforesaid

findings insofar as the merits of the case are concerned, are not

binding on the Controller.

(Ravi Krishan Kapur, J.)