Bcs S.P.A vs The Controller Of Patents And Designs
2023 Latest Caselaw 15074 Mad

Citation : 2023 Latest Caselaw 15074 Mad
Judgement Date : 28 November, 2023

Madras High Court

Bcs S.P.A vs The Controller Of Patents And Designs on 28 November, 2023

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

                                                                              CMA(PT)/23/2023

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED : 28.11.2023

                                                    CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                               CMA(PT)/23/2023

                     BCS S.P.A.,
                     via Marradi 1-Milano Italy,
                     Rep. by its Power of Attorney, Raghavan Ravindran Nair,
                     De Penning and De Penning,
                     having office at No.120,
                     Velachery Main Road,
                     Guindy, Chennai 600 032.                             ... Appellant

                                                      -vs-

                     The 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) filed under Section

                     117-A of the Patents Act, 1970, praying to call for the records of the

                     respondent culminating in the impugned order dated 09 July 2021

                     rejecting the Grant of Patent and Set Aside the same and

                     consequently direct grant of the Patent in respect of the Appellant's


                     1/7


https://www.mhc.tn.gov.in/judis
                                                                                  CMA(PT)/23/2023

                     Application No.992/CHE/2011.



                                       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 09.07.2021 by which

Application No.992/CHE/2011 for the grant of patent to an

invention entitled "Agricultural Driving Mechanism and Related

Tool" was rejected. The appellant filed the above mentioned

application on 29.03.2011. Pursuant to the examination, the first

examination report (FER) was issued on 19.03.2018. In the FER, the

controller raised objections inter alia on the grounds of lack of

inventive step by citing prior arts. The appellant replied to the FER

on 12.07.2018. The hearing notice was issued on 12.04.2021 and the

objections with regard to lack of inventive step were maintained

https://www.mhc.tn.gov.in/judis CMA(PT)/23/2023

therein. Pursuant to a hearing on 19.05.2021, the appellant filed

written submissions on 24.05.2021. The impugned order was issued

thereafter.

2. Learned counsel for the appellant assails the impugned order

primarily on the ground that the order is completely unreasoned. By

inviting my attention to the said order, learned counsel submits that

ten prior art documents (D1 to D10) were cited therein. Thereafter,

learned counsel points out with reference to internal pages 3 to 30

thereof that the Controller merely reproduced extracts from each

prior art. Learned counsel further submits that the controller merely

extracted key words from the above mentioned prior arts in the

operative portion of the order at internal pages 30 and 31 thereof

before drawing the conclusion at internal pages 31 and 32 that the

claimed invention is obvious on the basis of the cited prior art. In

fact, learned counsel handed over a marked up version of the

operative portion of the order where the portions lifted straight from

the respective prior art documents are marked. In these

https://www.mhc.tn.gov.in/judis CMA(PT)/23/2023

circumstances, learned counsel submits that the impugned order is

liable to be set aside and the application remanded for re-

consideration.

3. In response of these submissions, Mr.J.Madanagopal Rao,

learned SPC, relies on the counter filed by the respondent. He

further submits that a scientific adviser may be appointed in view of

the technical nature of the claimed invention.

4. On examining the impugned order, it is evident that portions

of the cited prior arts were extracted across most of the pages thereof.

Even the operative paragraphs of the impugned order do not contain

any consideration of the submissions of the appellant either in

response to the FER or in the written submissions filed pursuant to

the hearing. The cited prior arts appear to have been combined in the

operative portion of the order by lifting portions thereof in order to

draw a conclusion that the claimed invention is obvious to the person

skilled in the prior art. Since such order is bereft of reasoning, the

https://www.mhc.tn.gov.in/judis CMA(PT)/23/2023

order cannot be sustained and is, hereby, set aside.

5. Consequently, the matter is remanded for re-consideration

on the following terms and conditions:

(i) In order to preclude the possibility of pre-determination, an

officer other than the officer who issued the impugned order shall

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.