Dated: 24.08.2023 vs The Assistant Controller Of ...
2023 Latest Caselaw 11156 Mad

    2023:MHC:3925


                                                                              (T)CMA(PT)/4/2023

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS
                                               DATED: 24.08.2023
                                                     CORAM
                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                               (T)CMA(PT)/4/2023
                                               (OA/2/2018/PT/CH)

                     BIGTEC PRIVATE LIMITED,
                     Through its Authorized Representative
                     2nd Floor, Golden Heights,
                     59th 'C' Cross, 4th 'M' Block, Rajajinagar,
                     Bangalore 560 010, Karnataka, India.                ... Appellant
                                                        -vs-

                     The ASSISTANT CONTROLLER OF PATENTS & DESIGNS,
                     Patent Office Branch
                     Intellectual Property Building,
                     G.S.T. Road,
                     Guindy,
                     Chennai 600 032                            ...
                     Respondent

                     PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
                     Sections 117-A of the Patents Act, 1970, prays to (i) allow the present
                     Appeal and set aside quash the impugned order dated July 26, 2017
                     passed by the Respondent for Indian Patent Application No.
                     421/CHE /2009 (ii) direct grant of patent in respect of the said
                     Indian Patent Application No. 421/CHE/2009




                     1/6


https://www.mhc.tn.gov.in/judis
                                                                                 (T)CMA(PT)/4/2023

                                       For Appellant     : Mr.Shatadal Ghosh &
                                                          Mr.K.Muthuselvam for
                                                          for M/s.K and S Partners

                                       For Respondent   : Mr.K.Subbu Ranga Bharathi, CGSC
                                                         *********

                                                        JUDGMENT

The appellant assails an order dated 26.07.2017 by which the

request for grant of patent was declined. By the impugned order, the

respondent concluded that the amended claims 1 to 10 do not involve

an inventive step as required by Section 2(1)(ja) of the Patents Act,

1970 (the Patent Act). The respondent also concluded that amended

claims 5 to 7 are not patentable under Section 3(e) of the Patents Act.

2. At the hearing on 25.07.2023, learned counsel for the

appellant dealt with the cited prior art and contended that the

claimed invention satisfies all the requirements of Section 2(1)(j) and

that the claimed invention would not be obvious to a person skilled

in the art on the basis of the cited prior arts. He also contended that

amended claims 5 to 7 are not within the scope of Section 3(e) of the

https://www.mhc.tn.gov.in/judis (T)CMA(PT)/4/2023

Patents Act. With specific reference to the cited prior art documents,

learned counsel pointed out that the cited prior arts are either not

relevant or, at any rate, do not contain any teaching that lead to the

claimed invention.

3. Upon obtaining instructions, Mr.Subbu Ranga Bharathi,

learned Central Government Standing Counsel, submits that the

matter may be remanded for re-consideration. The said submission is

made without making any concession on the merits of the matter.

4. Learned counsel for the appellant is agreeable to this course

of action subject to two caveats:

(i) Such re-consideration should be confined to the grounds on which the patent application was refused and the prior arts cited therein.

(ii) Such re-consideration should be by a different officer.

5. On instructions, Mr.Subbu Ranga Bharathi is agreeable to the

https://www.mhc.tn.gov.in/judis (T)CMA(PT)/4/2023

first requirement of learned counsel for the appellant. As regards the

second, I am of the view that it is appropriate that a different officer

considers the matter on remand so as to preclude confirmation bias.

6. In view of the above development, it is unnecessary to

adjudicate the appeal on merits. Instead, the impugned order is set

aside on the ground of non-consideration of contentions raised by the

appellant both with regard to the cited prior art and the objection

under Section 3(e).

7. Consequently, (T)CMA(PT) No.4 of 2023 is disposed of

without any order as to costs, without expressing any opinion on the

merits, and the matter is remanded for re-consideration on the

following conditions:

(i) Re-consideration shall be confined to the grounds on which the application was rejected by impugned order dated 26.07.2017 and the prior art cited therein.

https://www.mhc.tn.gov.in/judis (T)CMA(PT)/4/2023

(ii) An officer other than the officer who passed the impugned order shall undertake such re- consideration.

(iii) After providing a reasonable opportunity to the appellant, a reasoned decision should be issued within a maximum period of four months from the date of receipt of a copy of this order.

                                                                                           24.08.2023

                     Index                   : Yes / No

                     Internet                : Yes / No

                     Neutral Citation: Yes/No

                     kal




                                                          SENTHILKUMAR RAMAMOORTHY, J

https://www.mhc.tn.gov.in/judis (T)CMA(PT)/4/2023

kal

(T)CMA(PT)/4/2023 (OA/2/2018/PT/CH)

24.08.2023

https://www.mhc.tn.gov.in/judis