KAWAKAMI, SHIGEKI & ORS. vs ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 191/2022 & I.A. 9441/2022
KAWAKAMI, SHIGEKI & ORS. …..Appellants
Through: Mr. Kshitij Saxena and Mr. Daksh Oberoi, Advocates.
Mob: 8447226229
versus
ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
…..Respondent
Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Advocates.
Mob: 9810788606
Email: hvscgscdhc@gmail.com
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
J U D G M E N T
21.08.2024
MINI PUSHKARNA, J:
1. The present appeal has been filed impugning the order dated 15th November, 2021 issued by the Assistant Controller of Patents and Designs under Section 15 of the Indian Patents Act, 1970 (Patents Act), whereby the application filed on behalf of the appellant, being Patent Application No. 201817032492, was rejected.
2. The appellant filed the patent application before the Delhi Patent Office on 30th August, 2018, as a National Phase Application, based on the Patent Corporation Treaty (PCT) Application no. PCT/JP2017/004049, dated 3rd February, 2017.
3. The Patent Office examined the subject application and issued a First Examination Report (FER) dated 4th December, 2019. The appellant filed a detailed response to the same on 4th June, 2020, along with revised set of claims.
4. Subsequent to the filing of the response to the FER, the appellant received a hearing notice dated 20th August, 2020. Upon request of the appellant, the initial hearing was adjourned and appellant received extended hearing notice dated 22nd September, 2020, for hearing on 22nd October, 2020. The appellant thereafter, filed post hearing written submissions, along with amended set of claims. However, the patent application of the respondent was rejected vide the impugned order dated 15th November, 2021.
5. Learned counsel appearing for the appellant has raised a short point that the patent application of the appellant was refused on the ground of lack of novelty under Section 2(1)(j) of the Patents Act. Whereas, the objection under Section 2(1)(j) of the Patents Act, regarding lack of novelty was not even mentioned in the hearing notice. Therefore, it is contended that the application of the appellant should not have been refused on the ground that the subject matter lacked novelty.
6. On the other hand, learned counsel appearing for the respondent justified the impugned order.
7. I have heard learned counsels for the parties and have perused the record.
8. At the outset, this Court notes that in the hearing notice, the objections taken by the respondent were with regard to lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act. However, the impugned order dated 15th November, 2021 rejected the patent application of the appellant only on the ground of lack of novelty, under Section 2(1)(j) of the Patent Act, which objection never formed part of the hearing notice. The objections with regard to lack of inventive step and non-patentability were not even analyzed and the sole ground of rejecting the application of the appellant was on the basis of lack of novelty, which objection was never taken in the hearing notice.
9. Accordingly, the impugned order suffers from infirmity, as the same has been passed on the basis of objection that did not form part of the objections referred in the hearing notice. It was obligatory for the respondent to have raised all objections in the notice of hearing. Thus, passing the impugned order on the basis of an objection, which was completely missing in the hearing notice, violates the Principles of Natural Justice.
10. Holding that appellant ought to have been made aware of all grounds of objection before the hearing, and afforded sufficient opportunity to contest the same at the time of hearing, this Court in the case of Perkinelmer Health Sciences Inc. and Others Versus Controller of Patents1, has held as follows:
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7. The hearing notice dated 12th February, 2018 makes no mention of objection under Section 3(f). Appellant ought to have been made aware of all grounds of objection before the hearing and afforded sufficient opportunity to contest the same at the time of hearing. It was incumbent upon Respondent to have raised this objection in the notice of hearing itself. Albeit the Appellant had submitted written submissions subsequent to the hearing and not given any response qua Section 3(f) of the Act, that does not absolve the Respondent of its obligations under the Circular to communicate objections prior to the hearing and provide reasonable opportunity to the applicant/Appellant. Objection under Section 3(f) of the Act has ex-facie been raised for the first time at hearing stage as is apparent from afore-extracted portion of the impugned order. There is thus merit in the submission of Mr. Banerjee that Respondent has violated the principles of natural justice.
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(Emphasis Supplied)
11. Likewise, holding that the Controller of Patents is obliged to enumerate all pending objections in the hearing notice, and a failure to do so is violative of the Principles of Natural Justice, this Court in the case of Bayer Pharm Aktiengesellschaft Versus Controller General of Patents and Designs2, has held as follows:
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6. The Court has considered the aforenoted contentions. As regards non-communication of objection under Section 3(e) of the Act, this Court has consistently maintained, across multiple decisions, that the Controller of Patents is obliged to enumerate all pending objections in the hearing notice. This practice is fundamental to ensure procedural fairness, as it allows the Applicant to adequately prepare and present their arguments concerning the specified objections. A failure to do so is violative of the principles of natural justice that can significantly prejudice the Applicant’s ability to effectively address and counter the objections raised.1 Furthermore, Circular No. 4 of 2011 published by the Controller General of Patents, Designs, and Trade Marks, states as follows:
k. If upon Examination of the response submitted by the Applicant, the Examiner reports that some objections are still outstanding or raises further objection(s), such objections shall be communicated alone with the notice of hearing, giving reasonable time to the Applicant.
7. Evidently, in the present case, the hearing notice failed to enumerate the objections under Section 3(e) of the Act. Consequently, the Court concurs with Mr. Banerjee’s argument that the order in question infringes upon the principles of natural justice. The omission deprived the Appellant of the opportunity to address this specific ground, thereby impairing their ability to defend their application fully. Therefore, the impugned order to that extent, is arbitrary and suffers from procedural irregularities, and ought to be remanded to the Patent Office.
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(Emphasis Supplied)
12. Considering the aforesaid, the impugned order dated 15th November, 2021 is set aside, and the matter is remanded back to the respondent for fresh consideration.
13. The subject application is restored to its original number. The respondent shall issue a fresh notice of hearing raising all the objections, within a period of four weeks from today, and hearing shall be granted to the appellant, accordingly.
14. All rights and contentions of the parties are left open. The respondent shall decide the application on merits, in accordance with law. The decision shall be taken expeditiously, within an outer limit of four months from today.
15. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in for compliance.
16. The appeal is disposed of, along with the pending application, in the aforesaid terms.
(MINI PUSHKARNA)
JUDGE
AUGUST 21, 2024
ak
1 2023 SCC OnLine Del 8590
2 2024 SCC OnLine Del 2044
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