Madras High Court
Daikin Industries Ltd vs Controller Of Patents And Designs on 1 February, 2024
Author: N.Seshasayee
Bench: N.Seshasayee
CMA(PT)/25/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 01.02.2024
CORAM
MR.JUSTICE N.SESHASAYEE
CMA(PT)/25/2023
Daikin Industries Ltd.
Umeda Center Building, 4-12, Nakazaki-Nishi 2-Chome
Kita-ku, Osaka-shi, Osaka 530-8323, Japan
Nationality: Japan
Rep. by its Authorized Representative Mr.Raghavan Ravindran Nair
De Penning & De Penning, Having office at
No.120, Velachery Main Road, Guindy, Chennai 600 032
... Appellant
Vs.
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 Sections
117-A of the Indian Patents Act, 1970, to call for the records of the
respondent culminating in the impugned order dated 21.09.2021 rejecting
the Grant of Patent and set aside the same and consequently direct Grant of
Patent in respect of the Appellant's Application No.201947021074.
1/7
https://www.mhc.tn.gov.in/judis
CMA(PT)/25/2023
For Appellant : Mr.S.Shivathanu Mohan
for M/s.S.Ramasubramaniam & Associates
For Respondent : Mr.J.Madhana Gopal Rao
Senior Panel Counsel
JUDGMENT
The appellant herein approached the patent office with its application dated
28.05.2019 seeking patent for a certain chemical composition which the
appellant introduces as a 'FLUORINATED POLYMER AND SURFACE
TREATING AGENT COMPOSITION'. In all, he made 15 claims. On
12.03.2020, the respondent came out with its First Examination Report
(FER) raising certain objections. The appellant herein has responded to the
same with its reply dated 17.08.2020 along with certain amendment to the
claims originally made. This was followed by a hearing notice with certain
other objections. The appellant had responded to the same with its written
submissions dated 23.07.2021 with further set of amendments to its earlier
claims. The respondent would then proceed to pass his final proceedings
and rejected the appellant's application for grant of patent vide its order
dated 21.09.2021. This is now under challenge.
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CMA(PT)/25/2023
2.Heard both sides.
3.Introducing his case as narrated above, the learned counsel for the
appellant submitted that the chemical composition which the appellant had
invented is entirely a new composition, which when used in textile goods or
even paper will make the material on which the said compound is applied
oil and water resistant.
4.Shifting his focus to the impugned proceedings, the learned counsel
submitted that the respondent had not addressed the issues that was finally
before him. The appellant has made atleast 3 amendments to the original
claim it has made, but the respondent has cherry picked some claims as was
originally made and picked few other from the amended claim and
mismatched both the claims, and demonstrated the same by comparing the
impugned proceedings with the amendments he had made to his original
claim. He submitted that what deserves to be considered is the final claims
he had made along with the written submissions untouched by the initial
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CMA(PT)/25/2023
impression of the respondent which he has conveyed through the FER. The
learned counsel has also circulated seven paged comparative table and has
listed in how many different places the patent controller was in error.
5.This Court perused the entire record and finds that the table the appellant
has provided fits in with the facts disclosed by his typed set of papers. Very
obviously, the respondent has been in error as he has not done a complete
job of his responsibility. This has resulted in instituting what this Court
considers as an avoidable litigation. In other words, a little care on the part
of the respondent could have easily avoided the present litigation.
6.To conclude, this Court chooses to allow this appeal and sets aside the
proceedings of the respondent dated 21.09.2021 and remands the matter
back to the respondent for denovo consideration of the appellant's
application for patent. To save embarrassment for the patent controller who
passed the impugned proceedings, this Court directs that the application be
now considered by another controller. The patent controller who would
now be considering the application of the appellant is required to do a
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CMA(PT)/25/2023
complete job of his responsibility and he is required to dispose of the
application as expeditiously as possible.
7.In the result, this appeal stands allowed. There shall be no order as to
costs.
01.02.2024
kas
Index : Yes / No
Neutral Citation: Yes / No
https://www.mhc.tn.gov.in/judis
CMA(PT)/25/2023
N.SESHASAYEE, J.
kas
CMA(PT)/25/2023
https://www.mhc.tn.gov.in/judis
CMA(PT)/25/2023
01.02.2024
https://www.mhc.tn.gov.in/judis
