Case: KAWAKAMI, SHIGEKI & ORS. Versus ASSISTANT CONTROLLER OF PATENTS AND DESIGNS C.A.(COMM.IPD-PAT) 191/2022

Introduction

The appeal challenges an order issued on 15th November 2021 by the Assistant Controller of Patents and Designs. This order rejected a patent application filed by the Appellant, identified as Indian Patent Application No. 201817032492 under Section 15 of the Indian Patents Act, 1970. The appellant contended that the rejection was unjust and that the process did not adhere to established legal procedures.

The appeal primarily questioned whether the rejection was based on valid grounds and if the procedural norms were followed correctly. This case highlights the importance of procedural fairness in the patent examination process and the need for adherence to legal principles to ensure that applicants are treated justly.

Background

The patent application at the heart of this appeal was filed with the New Delhi Patent Office on 30th August 2018. This application was a National Phase Application, derived from PCT/JP2017/004049, filed on 3rd February 2017.

The New Delhi Patent Office undertook a detailed examination of the application to assess its compliance with patentability criteria. On 4th December 2019, a First Examination Report (FER) was issued, detailing several objections and issues concerning the application.

In response to the FER, the appellant filed a comprehensive response on 4th June 2020, including a revised set of claims aimed at addressing the objections raised in the FER.

Thereafter, the Appellant was notified of a hearing scheduled for 22nd October 2020, to present its case and argue why its patent application should be approved. After attending the scheduled oral hearing and discussing the various pending objections with the Controller of Patents,

Despite these efforts to address the concerns raised by the Patent Office, the patent application was ultimately rejected in the Order dated 15th November 2021. The rejection was based on lack of novelty under Section 2(1)(j) of the Patents Act. This section defines novelty as a requirement for patentability, meaning that the invention must be new and not part of the prior art.

Dissatisfied with the rejection of the grant of patent, the Appellant filed an appeal before the Delhi High Court, challenging the decision of the Assistant Controller. The Appellant contended that the rejection on this ground was incorrect and arbitrary, because the objection regarding lack of novelty was not mentioned in the hearing notice. According to the appellant, the hearing notice only addressed objections related to lack of inventive step under Section 2(1) (ja) and non-patentability under Section 3(d) of the Act.

The failure to include lack of novelty as a ground for objection in the hearing notice raises significant concerns about procedural fairness. The principles of natural justice require that all parties be given a fair opportunity to respond to the objections raised against them. If an objection is not communicated in advance, the affected party may not have the chance to adequately address it during the hearing. In this case, the Appellant argued that they were not given a fair opportunity to defend their application against the lack of novelty objection, as this issue was introduced only in the final decision.

Legal precedents underscore the importance of adhering to procedural norms in such cases. For example, in the case of Perkinelmer Health Sciences Inc. vs. Controller of Patents, 2023 SCC OnLine Del 8590 the court emphasized that all objections must be communicated in the hearing notice. This ensures that the appellant is fully aware of the issues they need to address and can prepare a robust response. The court in this case highlighted that failing to inform the appellant of specific objections before the hearing constitutes a violation of natural justice.

Similarly, the Bayer Pharm Aktiengesellschaft vs. Controller General of Patents and Designs, 2024 SCC OnLine Del 2044 case reinforces the requirement for transparency and procedural fairness. The court held that the Controller of Patents must enumerate all pending objections in the hearing notice. This practice is essential for ensuring that the applicant can adequately prepare and present their arguments concerning each objection. The omission of certain objections from the hearing notice deprives the appellant of the opportunity to address these issues comprehensively, leading to an unfair and arbitrary decision.

The procedural flaw in this case—where the objection of lack of novelty was introduced only in the final order and not mentioned in the hearing notice—raises serious concerns about the fairness of the decision-making process. The Appellant’s ability to contest the rejection was compromised because they were not informed of all the grounds for rejection beforehand. This lack of transparency undermines the integrity of the patent examination process and calls into question the validity of the final decision.

Court’s Analysis and Decision

The Delhi High Court, after carefully evaluating the arguments from both parties, delivered its judgement. The court’s analysis centered on the following key points i.e. The Delhi High Court decided to set aside the impugned order dated 15th November 2021 and ultimately remanded the case to the patent office for reconsideration. It instructed the Assistant Controller to re-evaluate the patent application based on the court’s observation, ensuring that all applicable legal and procedural standards were properly observed. The court also observed that the appellant must be given a fair chance to present their case, and a well-reasoned order should be issued after thoroughly reviewing the invention’s merits.

The Court has also directed that the decision on the patent application be made expeditiously, within a timeframe of four months from the date of the new hearing. This new hearing notice must detail all grounds for rejection, including those related to lack of novelty, to ensure that the appellant is fully informed and has the opportunity to address each objection effectively. This ensures that the appellant’s application is processed in a timely manner, and that any further delays are minimized. By setting these clear guidelines, the Court aimed to uphold the principles of natural justice and ensure that the patent examination process is fair and transparent.

Conclusion

The ruling in Kawakami, Shigeki & Ors. Vs. Assistant Controller of Patents and Design, C.A.(COMM.IPD-PAT) 191/2022 highlights the critical importance of procedural fairness and the complexities involved in the patent examination process in India. Ensuring that all objections are communicated and addressed appropriately is fundamental to maintaining the integrity of the patent system. By setting aside the initial order and remanding the matter for fresh consideration, the Court reinforces the need for transparency and adherence to legal principles, providing the appellant with a fair opportunity to contest the grounds of rejection and seek a just resolution to their patent application. This case is noteworthy for reinforcing the need for transparency, fairness and consistency in the patent granting process.

Mr. Kshitij Saxena, Senior Partner, Kan and Krishme

Mr. Saurav Suman Singh, Patent Associate, Kan and Krishme

Mr. Daksh Oberoi, Associate, Kan and Krishme