Madras High Court
Amazon Technologies Inc vs The Controller Of Patents & Designs on 23 January, 2025
Author: Abdul Quddhose
Bench: Abdul Quddhose
CMA(PT) No.47 of 2024
IN THE HIGH COURT OF JUDICATUE AT MADRAS
DATED: 23.01.2025
CORAM
THE HONOURABLE MR. JUSTICE ABDUL QUDDHOSE
CMA(PT) No.47 of 2024
Amazon Technologies Inc.,
Nevada, USA. .. Appellant
Vs
1.The Controller of Patents & Designs,
Guindy, Chennai – 32.
2.The Assistant Controller of Patents & Designs,
IPO Buildings, Plot No.32,
Dwarka, New Delhi – 110 078. .. Respondents
Prayer: This appeal is filed under Section 117-A of the Patents
Act, 1970, seeking to set aside the order passed by the Assistant
Controller of Patents & Designs dated 08.04.2021 in Patent Application
No.5937/CHENP/2010; to hold that the claimed subject matter of the
Claims 1-14 of the Patent Application No.5937/CHENP/2010 is
inventive and complies with the requirements under Section 2(1)(j) of the
Patents Act, 1970; and to direct the Controller to grant the patent and
publish the patent in the journal.
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CMA(PT) No.47 of 2024
For Appellant : Ms.Vindhya S.Mani
Assist. by G.Sheerbdhinath
For Respondents : Mr.S.Janarthanam, SPCGSC
JUDGMENT
This appeal has been filed under Section 117A of the Patents Act,
1970, challenging the impugned order dated 08.04.2021 passed by the
second respondent refusing to grant patent for the appellant's claimed
invention on the ground that they did not meet the requirements as per
Section 2(1)(ja) of the Patents Act, i.e., it lacks inventive step in view of
prior art document (D1).
2. The learned counsel for the appellant drew the attention of this
Court to the hearing notice dated 01.10.2020 issued by the second
respondent pursuant to the First Examination Report (FER) and would
submit that in the said hearing notice, three prior art documents, namely,
D1 to D3 were referred. She also drew the attention of this Court to the
impugned order and would submit that despite referring to three prior art
documents, namely, D1 to D3 in the hearing notice, the second
respondent while passing the impugned order has relied upon only one
prior art document, namely, D1. She would further submit that as seen
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from the impugned order, no reasons have been given as to how D1 is
applicable to the appellant's claimed invention. Therefore, on the ground
of the impugned order being a non-speaking order, this appeal has been
filed.
3. The learned standing counsel for the respondents would reiterate
the contents of the impugned order and would submit that only due to the
fact that there are prior art documents, the appellant's claimed invention
was refused to be patented as it lacks inventive step.
4. However, as seen from the impugned order as well as from the
hearing notice dated 01.10.2020, it is clear that the second respondent
while passing the impugned order has not given any reasoning as to how
prior art documents are applicable to the appellant's claimed invention. It
is also noticed from the impugned order that the second respondent has
relied upon only one prior art document, namely, D1, while refusing to
grant patent for the appellant's claimed invention, eventhough in the
hearing notice issued by them they had relied upon three prior art
documents, namely, D1 to D3. The said fact is also not disputed by the
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learned standing counsel for the respondents.
5. The Patent Office/respondents, being a quasi-judicial authority,
while deciding an application seeking for patent, will have to adhere to
the principles of natural justice and they will have to give proper reasons
as to why they are refusing to grant patent for any claimed invention. As
seen from the impugned order, it is clear that that the second respondent
by total non-application of mind has passed a non-speaking order as no
reasons have been given as to how D1 is applicable to the appellant's
claimed invention. The hearing notice issued to the appellant also refers
to three prior art documents (D1 to D3), but, the impugned order talks
about only one prior document (D1).
6. Therefore, for the foregoing reasons, this Court is of the
considered view that the impugned order passed by the second
respondent is a non-speaking order and has been passed by total non-
application of mind and therefore, the same will have to be quashed by
this Court and remanded back to the second respondent for fresh
consideration. Accordingly, the impugned order passed by the second
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respondent dated 08.04.2021 is set aside and the matter is remanded back
to the second respondent for fresh consideration. The second respondent
is directed to pass a speaking order by considering the written
submissions of the appellant as well as by adhering to the principles of
natural justice, on merits and in accordance with law, within a period of
six months from the date of receipt of a copy of this order. To avoid pre-
determination and prejudice, this Court directs the first respondent to
appoint a different officer other than the one who has passed the
impugned order for adjudicating the appellant's patent application.
In terms of the above directions, this appeal is disposed of. No
Costs.
23.01.2025
rkm
Index:yes/no
Neutral citation: yes/no
https://www.mhc.tn.gov.in/judis
ABDUL QUDDHOSE,J.
rkm
To
1.The Controller of Patents & Designs,
Guindy, Chennai – 32.
2.The Assistant Controller of Patents & Designs,
IPO Buildings, Plot No.32,
Dwarka, New Delhi – 110 078.
23.01.2025
https://www.mhc.tn.gov.in/judis
