Calcutta High Court
Vmi Holland B.V. (Sr. No. ... vs Deputy Controller Of Patents And ... on 16 June, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIP-24
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
IPDPTA/21/2022
VMI HOLLAND B.V. (SR. NO. 47/2020/PT/KOL)
VS
DEPUTY CONTROLLER OF PATENTS AND DESIGNS AND ORS
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
Date : 16th June, 2025.
Appearance:
Mr. Debnath Ghosh, Sr. Adv.
Mr. Biswaroop Mukherjee, Adv.
Mr. Subesh Banerjee, Adv.
Ms. Madhumanti Chakraborty, Adv.
...for petitioner.
The Court: This appeal is directed against an order dated 9th March 2020,
whereby the Deputy Controller of Patents and Designs has rejected the subject
application on the ground that the same lacked inventive steps.
Briefly the subject invention titled "Assembly for and method of making a
tyre component" has a priority date of 16th October 2006 and an international
filing date of 26th September 2007.
The invention pertains to a product as well as a process patent.
In brief, the assembly layout of the proposed invention comprised of the
following steps;
a) A first conveyor device for conveying a first tyre
component;
b) A first building unit having a first building drum
wherein the first building drum is placed in an operative
position for picking up the first tyre component conveyed by
2
the first conveyor device, wherein, the first building drum has
a first axis of rotation;
c) A second conveyor device for conveying a second tyre
component, wherein, the second tyre component differs from
the first tyre component;
d) A second building unit having a second building drum,
wherein, the second building drum is placed in an operative
position for picking up the second tyre component conveyed
by the second conveyor device, wherein, the second building
drum has a second axis of rotation; wherein, at least one of
the building drums is linearly vertically movable and at least
one of the building drums can be placed in an operative
position in which the axis of rotation of one building drum is
out of line, but parallel to the axis of rotation of the other
building drum placed in an operative position, wherein, the
said building drum is vertically movable, transverse to its axis
of rotation, to an operative position in question immediately
above an end of the corresponding conveyor belt.
It is contended on behalf of the appellant that the impugned order is an
unreasoned order and the conclusion that the subject invention lacked
inventive steps is unsupported. Significantly, corresponding patents originating
from an identical application had been granted in Europe, Japan, Korea,
Russia, Taiwan and Brazil. All such materials were totally ignored in passing
the impugned order.
3
Pursuant to the filing of the above application, a First Examination
Report dated 28th June 2017 was issued by the Controller. The appellant had
responded to such a First Examination Report on 22nd September 2017 and
consequently amended the claims to meet all requirements. The revised claims
in support of the specification as originally filed were also before the Controller.
All the essential features and steps of the assembly and the method according
to the invention which are required for achieving the desired result were
defined as independent claims in the application filed by the appellant. In
addition, the subsidiary and preferred features and aspects of the subject
invention were also highlighted in their claim.
Despite written arguments being filed dealing with all the steps of the
subject claims, the Controller has disregarded all the materials relied on by the
appellant and cursorily passed the impugned order without any reasons
whatsoever. In support of such contention, the appellant relies on Dolby
International AB v. Assistant Controller of Patents and Designs: 2023 SCC
Online Del 1521, Uniworth Resorts v. Ashok Mittal: 2007 SCC Online Cal 535
and Kranti Associates Private Limited & Anr. v. Masood Ahmed Khan & Ors.:
(2010) 9 SCC 496.
It is fairly submitted on behalf of the respondent Controller that the
impugned order cannot be supported or added to.
A perusal of the impugned order would demonstrate that after
enumerating the features of all the prior arts, the Controller has concluded
that "the argument of the applicant is not persuasive and the objection regarding
lack of inventive steps remains yet to be complied with. Having considered all the
facts, submissions made by the applicant during the hearing and as well as all
the documents on record and also in view of my above findings, I hereby refuse
the application for patent number 1485/KOLNP/2009 under section 15 of the
Patents Act 1970."
There are no other reasons recorded in the impugned order.
It has been repeatedly reiterated that such orders must have the
fundamental requisites of an adjudication and cannot be passed in an arbitrary
manner. There is simply no finding on the merits. The impugned order also
does not also deal with the technical or scientific data relied on by the
appellant. In Kranti Associates Private Limited and another versus Masood
Ahmed Khan and others, (2010)9 SCC 496, it is been held as follows;
"12. The necessity of giving reason by a body or authority in support of its
decision came up for consideration before this Court in several cases. Initially this
Court recognised a sort of demarcation between administrative orders and quasi-
judicial orders but with the passage of time the distinction between the two got
blurred and thinned out and virtually reached a vanishing point in the judgment of
this Court in A.K. Kraipak v. Union of India¹.
14. The expression "speaking order" was first coined by Lord Chancellor Earl
Cairns in a rather strange context. The Lord Chancellor, while explaining the
ambit of the writ of certiorari, referred to orders with errors on the face of the
record and pointed out that an order with errors on its face, is a speaking order.
(See pp. 1878-97, Vol. 4. Appeal Cases 30 at 40 of the Report).
15. This Court always opined that the face of an order passed by a quasi-judicial
authority or even an administrative authority affecting the rights of parties, must
speak. It must not be like the "inscrutable face of a sphinx".
The impugned order has been mechanically passed and is devoid of any
reasons. There has been no application of mind in passing the impugned order.
The well settled principles for deciding inventive steps have not even been
adverted to nor referred to in the impugned order.
In view of the above, the impugned order is unsustainable and set aside,
the matter is remanded back to the respondent authority for reconsideration.
Needless to mention, there has been no adjudication on the merits of the case
and all questions are left open to be decided within a period of three months
from the date of communication of this order and after giving a right of hearing
to the appellant.
With the above directions, IPDPTA/21/2022 stands disposed of.
(RAVI KRISHAN KAPUR, J.)
SK.
