Delhi High Court
Vexim vs The Controller Of Patents on 28 April, 2023
2023:DHC:2988
$~1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 28th April, 2023
+ C.A.(COMM.IPD-PAT) 50/2022
VEXIM ..... Appellant
Through: Mr.Nitin Masilamani and
Mr.Amritanshu Jha, Advocates.
versus
THE CONTROLLER OF PATENTS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and
Mr.Alexander Mathai Paikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present appeal has been filed under Section 117-A of the Patents
Act, 1970 (hereinafter 'the Act') impugning the order dated 24th July, 2017
passed by the Assistant Comptroller of patents rejecting the Indian Patent
application no. 7174/DELNP/2006 (hereinafter "subject application") titled
"Methods and Apparatuses for Bone Restoration" (hereinafter "subject
invention").
2. The impugned order was served on the appellant on 28th July, 2017
and the three months period provided for filing an appeal expired on 28th
October, 2017. The present appeal was filed on 29th January, 2018 with a
delay of 93 days.
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3. For the reasons stated in the application for the condonation of delay,
the same is allowed and the delay in filing of the present appeal is condoned.
4. Insofar as the merits of the appeal are concerned, brief facts relevant
to decide the present appeal are as follows:
4.1. The appellant had filed the subject application on 29th November,
2006 at the Patent Office, New Delhi. Subsequently, a complete
specification with claims was filed with the Patent Office.
4.2. The Patent Office issued a First Examination Report (FER) dated 4th
September, 2013 in terms of which, objection was raised that the
claims lack inventive step in view of the prior-art documents referred
to as D1, D2, D3, D4, D5, D6 and D7 and therefore, do not constitute
an invention under Section 2(1)(j) of the Act. Further, claims 2-17,
were also objected to. The FER also raised an objection under Section
3(i) of the Act stating that the claims were non-patentable.
4.3. A detailed response was filed on behalf of the appellant to the
aforesaid FER by letters dated 6th August, 2014 and 4th September,
2014. Subsequently, various hearing notices were issued by the Patent
Office to the appellant. Vide hearing notice dated 16th March, 2016
the Assistant Controller of Patents maintained the objections relating
to claims 1 to 5, 6 to 13 and 14 to 15 and the subject invention lacking
inventive steps in view of the prior art documents, D1 and D2. The
notice further maintained that the claims 16-17 were non-patentable
under Section 3(i) of the Act.
4.4. The appellant filed written submissions on 6th June, 2016 dealing with
the prior art cited by the Patent Office and patentability of the subject
invention. Along with the written submissions, the appellant also filed
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revised set of claims.
5. The impugned order was passed by the Patent Office on 24th July,
2017 rejecting the subject application and holding that the amended
claims 1 to 5 of the subject invention are not patentable under Section
2(1)(j) of the Act. The relevant part of the impugned order is set out
below:
"After going through the specification, amended claims 1-5 and the
cited documents Dl: WO 03/003951 and D2: WO 01/01895
carefully, I am of the opinion that the amended claims 1-5 shall be
obvious to a person skilled in the art in view of the combined
teachings of DI and D2.
Therefore, the finally amended claims I - 5 nos. of this patent
application are not allowed for grant of patent as they lacks in
inventive step as defined u/s 2(1)(j) read with 2(1 )(ja).
The Application is hereby refused patent ii/s 15 of "The Patent Act
1970"."
6. Counsel for the appellant submits that the respondent has failed to
consider the correct set of claims that were presented by the appellant before
the Controller. Vide post hearing written submissions dated 6th June, 2016,
the appellant had also filed an amended claim set. Out of the five objections
raised in the hearing notice dated 16th March, 2016, four objections were
waived by the impugned order. However, the subject invention was rejected
on the ground of the objection no.1 as raised in the hearing notice. However,
the Patent Office has passed a cryptic order without disclosing any reasons
for refusal of the patent.
7. I have examined the record and heard the counsels for the parties.
8. There is merit in the submission of the appellant that the impugned
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order does not give any reasoning to arrive at a conclusion that the subject
matter of the patent application lacks inventive steps in terms of Section
2(1)(j) and Section 2(1)(j)(a) of the Act.
9. I am in agreement with the aforesaid submission of the appellant. In
this regard, a reference may be made to the judgment of a Co-ordinate
Bench of this Court in Agriboard International LLC v. Deputy Controller
of Patents and Designs, 2022 SCC OnLine Del 940, wherein it was held
that the Patent Office is required to pass a speaking order analyzing what is
the existing knowledge and how the subject invention lacks inventiveness in
light of the prior art. The relevant observation of this Court in Agriboard
international (supra) are set out below:
"23. The said reasoning has been reiterated by the Supreme Court
in Manohar v. State of Maharashtra & Ors. AIR 2013 SC 681
wherein it has been categorically observed that application of mind
and recording of reasoned decision are the basic elements of
natural justice. There can be no doubt that scrupulous adherence
to these principles would be required while rejecting patent
applications.
24. In the opinion of this Court, while rejecting an invention for
lack of inventive step, the Controller has to consider three
elements-
the invention disclosed in the prior art,
the invention disclosed in the application under
consideration, and
the manner in which subject invention would be obvious to a
person skilled in the art.
25. Without a discussion on these three elements, arriving at a bare
conclusion that the subject invention is lacking inventive step would
not be permissible, unless it is a case where the same is absolutely
clear. Section 2(1(ja) of the Act defines „inventive step‟ as under:
(ja) "inventive step" means a feature of an invention that
involves technical advance as compared to the existing
knowledge or having economic significance or both and that
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makes the invention not obvious to a person skilled in the art.
26. Thus, the Controller has to analyse as to what is the existing
knowledge and how the person skilled in the art would move from
the existing knowledge to the subject invention, captured in the
application under consideration. Without such an analysis, the
rejection of the patent application under Section 2(1)(ja) of the
Act would be contrary to the provision itself. The remaining prior
arts which are cited by ld. Counsel having not been considered in
the impugned order, the Court does not wish to render any opinion
in this regard."
[emphasis supplied]
10. The aforesaid judgment has been followed by me in Auckland
Uniservices Limited v. Assistant Controller of Patents and Designs, N.V.
Satheesh Madhav and Anr. v. Deputy Controller of Patents and Designs,
2022 SCC OnLine Del 4568 and the judgment dated 12th January, 2023 in
C.A.(COMM.IPD-PAT) 435/2022 titled Alfred Von Schukmann v. The
Controller General of Patents, Designs and Trademarks and Ors.
11. In the present case, detailed submissions were filed on behalf of the
appellant in response to the objections in the hearing notice, showing how
the subject invention was patentable under the Act.
12. Despite the above submissions seeking to establish how the subject
invention is patentable, the impugned order has been passed in a cryptic
manner without going into the explanation offered on behalf of the appellant
with regard to the patentability of the subject invention and considering the
unamended set of claims.
13. When viewed in light of the proposition of law laid down in the
aforesaid judgments, the impugned order is completely cryptic and does not
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give any reasoning or justification to arrive at the finding that the claims of
the appellant are non-patentable.
14. In view of the above, the impugned order dated 24th July, 2017
rejecting the patent application of the appellant is set aside and the matter is
remanded back to the Patent Office for fresh consideration. The fresh
consideration would take into account the material already on record and
more particularly, the amended claims filed by the appellant along with the
written submissions.
15. The Officer shall endeavour to pass a reasoned order taking into
account all the relevant considerations within two months from today.
16. The Registry is directed to supply a copy of the present order to the
Office of the CGPDTM on the e-mail ID- [email protected] for compliance.
AMIT BANSAL, J
APRIL 28, 2023
rt
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