Rejecting Patent Without A Speaking Order- Violation Of The Principle Of Natural Justice

A speaking order is an essential aspect to meet the standards of the principles of natural justice, and every rejection order of the Controller must provide reasoning to support its decision. The Delhi High Court in Treibacher Industrie AG vs Assistant Controller of Patents (C.A.(COMM.IPD-PAT) 92/2024), found that rejection of Treibacher's "Use of Vanadates as Oxidation Catalysts" by the Assistant Controller was not supported by reasons. Setting aside the order of the Assistant Controller, where the appellant's claims were rejected under Sections 59 and 2(1)(j), the Court ruled that said order was unreasoned and contrary to principles of natural justice.

Case of the Appellant

The Assistant Controller of Patents and Designs refused the grant of patent application (201917008959) on the grounds that (a) the proposed amended claims are beyond the scope of the original claims filed at the time of filing and (b) lack of inventive step underSection 2(1)(ja). The appellant suo moto amended the claims after entering India as a National Phase Application based on the PCT Application. This amendment was objected to by the Controller, stating the amended claims were beyond the scope of the earlier claims made at the time of filing and not permissible under Section 59(1).

During the hearing, the appellant submitted a detailed written statement in support of its contention. The learned Controller passed the impugned order, refusing the subject application on the grounds that the amended claims were beyond the scope of the earlier claims made at the time of filing. Additionally, the Controller stated that the invention lacked inventive step under Section 2(1)(ja) of the Act.

Argument of the Appellant

The Appellant submitted that the Controller erred in the interpretation of Section 59(1) of the Act. Additionally, the Controller passed the impugned order without considering the written submission filed by the appellant. On the technicality of the amendments, the appellant submitted that the claims filed under PCT and amendments of claims during the National Phase Entry and immediately thereafter are routinely permitted and practised in patent prosecution throughout the world, including India. The appellant asserted that the Controller failed to appreciate that such amendments were permitted in Allergan Inc vs Controller of Patents [2023 SCC OnLine Del], in Health Protection Agency vs Controller General of Patents & Designs and Anr. [2020 SCC OnLine IPAB 53], and in Nippon A&L INC vs The Controller of Patents [2022 SCC OnLine Del 1909].

Written Submission (WS) of the Appellant Not Considered

The appellant contended that in the written submission, a detailed table of claims providing support/references in the specification was included. Additionally, another table provided a comparison of the PCT claims and amended claims to illustrate that the amended claims do not fall outside the scope of the PCT claims. The appellant stated that the impugned order did not provide any reason to reject the said submissions.

Controller's Argument

The Controller (the respondent) submitted that the appellant amended the "USE" claim to a "PROCESS" claim but failed to exhibit any steps involved in the process. Additionally, the amended claims, instead of defining the process, were only defining the product/catalyst's "COMPOSITION", which leads to an issue of indefiniteness. The respondent asserted that the claims only explain the composition of the catalyst, which cannot be said to fall under the definition of either "Process" claims or "Use" claims.

Claims at Issue

Original Claim 1

Amended Claim 1

Court's Analysis of Impugned Order

Since the respondent relied on Nippon A&L Inc. vs The Controller of Patents 2022 SCC OnLine Del 1909, wherein it was held that four conditions must be fulfilled in order to make any amendment permissible under Section 59(1) of the Act, the Court examined whether the respondent's order spoke about how the following conditions were not met:

1. The amendment has to be by way of disclaimer, correction or explanation;
2. The amendment has to be for the purpose of incorporation of actual facts;
3. (a) The effect of the amendment ought not be to amend the specification to claim or describe any matter which was not disclosed in substance or shown in the originally filed specification.
   (b) The amended claims have to fall within the scope of claims as originally filed."

The Court found that the impugned order did not give any justification as to how the amended claims were not supported by the earlier filed claims. Accordingly, the impugned order was not a reasoned decision. The Court also found that the respondent in the impugned order did not point out any specific claim or step thereof that was not described in the CS.

Decision and Reasons

The Court found that the refusal order did not consider the detailed written submissions explaining through claim charts, specification references, and a comparison with the original PCT claims. Relying on the precedents in Blackberry Ltd. vs Assistant Controller of Patents [2023 SCC OnLine Del 5502] (a speaking order is an important aspect of the principles of natural justice and therefore, the learned Controller must provide reasoning to support its decision of the rejection) and Agriboard International LLC vs Deputy Controller of Patents [2022 SCC OnLine Del 940], (application of mind as well as recording of a reasoned decision are the basic elements of the principles of natural justice), the Court ruled that the impugned order did not provide any reason to support the conclusion, and could not be considered as a speaking order.

Further, the Court observed that the learned Controller did not consider the WS filed by the appellant, which ought to have been done. Therefore, the Court held that the impugned order is against the principles of natural justice, setting it aside and remanding it back for reconsideration by another learned Controller for fresh examination and decision within a period of six months from the date of this decision.

Concluding Remarks

This case is a quick reminder to the patent office to strictly follow and apply the principle of natural justice while rejecting any patent application. A speaking order of the Controller must be clearly supported by reasons, and the Controller must consider all the submissions made by the patent applicants before passing a refusal order. This order once again interpreted the applicability of Section 59(1) amendments and how the Controller should apply them in future cases.

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