Madras High Court
Panasonic Intellectual Property ... vs Deputy Controller Of Patents And ... on 1 December, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 01.12.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(PT)/22/2023
Panasonic Intellectual Property Management Co. Ltd.,
1-61, Shiromi 2-chome, Chuo-ku,
Osaka-shi, Osaka 540-6207, Japan,
Rep.cby its Authorized Representative,
Mr.Raghavan Ravindran Nair,
De Penning and De Penning,
Having office at No.120, Velachery Main Road,
Guindy, Chennai 600 032. ... Appellant
-vs-
Deputy Controller of Patents and Designs,
Government of India, Patent Office,
Intellectual Property Rights Building, GST Road,
Guindy, Chennai - 600 032. ... Respondent
PRAYER: Civil Miscellaneous Appeal (Patents) is filed under Section
117-A of the Indian Patents Act, 1970, praying to call for the records
of the Respondent culminating in the Impugned order dated 12th
January 2022 rejecting the Grant of Patent and Set Aside the same
and consequently direct Grant of the Patent in respect of the
1/7
https://www.mhc.tn.gov.in/judis
Appellant's Application No.201647039396.
For Appellant : Mr.Sivathanu Mohan
for M/s.S.Ramasubramaniam and Associates
For Respondent : Mr.J.Madanagopal Rao, SPC
**********
JUDGMENT
The appellant assails an order dated 12.01.2022 by which
Patent Application No.201647039396 for the grant of patent to the
claimed invention entitled “Washing Machine” was refused. The
appellant filed the above-mentioned application on 18.11.2016. Upon
a request for examination from the appellant, the First Examination
Report (FER) was issued by the respondent on 08.07.2019. In the
FER, by citing prior arts, the Controller raised objections inter alia on
the ground of lack of inventive step. The appellant responded to the
FER on 23.12.2019. Pursuant to a hearing on 13.08.2021, the
appellant filed written submissions explaining how the cited prior
arts do not lead to the claimed invention. Eventually, by impugned
https://www.mhc.tn.gov.in/judis
order dated 12.01.2022, the application was rejected. The present
appeal arises in the above facts and circumstances.
2. Learned counsel for the appellant invited my attention to the
impugned order and, in particular, the operative portion thereof.
After pointing out that the impugned order merely extracts from
prior art documents D1 to D3, he contended that the impugned order
contains no reasons at all. He also submitted that a patent was
granted in respect of the claimed invention by the Japanese Patent
Office and the Chinese Patent Office and that prior art document D3
was considered by the above mentioned patent offices. As regards
prior art documents D1 and D2, he submitted that they are non-
analogous prior arts.
3. In response to these submissions, Mr.J.Madanagopal Rao,
learned SPC, submitted that the application was rejected because the
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prior art documents referred to therein would lead a person skilled in
the art to the claimed invention. He also relies upon the counter filed
to the appeal. Without making any concession on the merits of the
matter, he submits that the matter may be remanded for re-
consideration on account of the allegation that the impugned order
does not contain detailed reasons.
4. The operative portion of the order consists of extracts from
prior art documents, D1, D2 and D3. Thereafter, the following
conclusions are recorded:
"After considering the arguments along
with theteachings of the citations, This office has
formed an opinion that A person skilled in the art
would able to combine the teachings of the cited
documents to arrive at the invention as claimed in
the instant application and there fore present
application lacks inventive step in accordance
with Section 2(1)(ja) of the Patents Act.
Having considered all the documents before
me including amended claims, applicants
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arguments along with the written submission,
further the teachings disclosed in the cited
documents D1 to D3 and my own analysis, I have
formed an opinion that Present application as
claimed in the amended claims lacks Inventive
step in accordance with Section 2(1)(ja) of the
Patents Act and decided to Refuse this
Application U/S 15 of the Patents Act."
5. It is evident from the above conclusions that no attempt was
made by the Deputy Controller to engage with the responses of the
appellant to the FER or to the oral and written submissions made
pursuant to the hearing notice. Since the order merely records
conclusions with no reasons in support thereof, the order is
unsustainable and is, hereby, set aside.
6. Consequently, the matter is remanded for re-consideration
on the following terms:
(i) In order to preclude the possibility of pre-determination, an
officer other than the officer who issued the impugned order shall
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undertake such re-consideration.
(ii) After providing a reasonable opportunity to the appellant, a
reasoned decision shall be issued within a period of four months
from the date of receipt of a copy of this order.
(iii) It is made clear that no opinion is being expressed herein
on the merits of the application.
7. Therefore, CMA(PT)/22/2023 is disposed of on the above
terms without any order as to costs.
01.12.2023
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Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
SENTHILKUMAR RAMAMOORTHY,J
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https://www.mhc.tn.gov.in/judis
CMA(PT)/22/2023
01.12.2023
https://www.mhc.tn.gov.in/judis
