Full Judgment Text
Neutral Citation Number : 2023/DHC/001854
$~32 (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 10/2021 and I.A. 13552/2021 (Stay)
DOLBY INTERNATIONAL AB ..... Appellant
Through: Ms. Vindhya S. Mani and Mr.
Gursimran Singh Narula, Advs.
Versus
THE ASSISTANT CONTROLLER
OF PATENTS AND DESIGNS ..... Respondent
Through: Mr. Harish Vaidyanathan
Shankar, CGSC with Mr. Srish Kumar
Mishra, Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (ORAL)
% 14.03.2023
th
1. This appeal assails the order dated 29 January 2021 whereby
Application No. 6570/DELNP/2009, of the appellant, has been
rejected by the Assistant Controller of Patents.
2. I am constrained to observe that the impugned order, to say the
least, most unsatisfactorily drawn up – it is hardly possible to treat it
as written or drafted. To illustrate why I am constrained to express
my anguish thus, I deem it appropriate to place the impugned order on
record in the form of a screenshot thus:
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3. It is impossible to understand, from the impugned order, where
the reference to the claims begins, what part refers to the FER and
where one is to find the reasoning of the Assistant Controller. In fact,
in para 6 of the impugned order, a full page has been devoted to what
appears to be a part of a diagram which has been cut and pasted by the
Assistant Controller apparently for no reason whatsoever.
4. Let us try to deconstruct the impugned order. Para 1 is formal.
Para 2 cuts and pastes the objection which was found outstanding
from those in the First Examination Report (FER), as communicated
to the appellant by the Controller. Para 4 first reproduces the claim in
the patent application and, thereafter, sets out the response of the
appellant thereto. Para 5 initially records the observation of the
Assistant Controller that he did not “find the submission persuasive”
in view of the reasons which follow. What follows, however, is only
the claim of the appellant in its application. Para 6, thereafter, starts
with the reassuring comment that the “oral argument and written
submission of the agent of the appellant have been carefully
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considered”. Thereafter, however, the impugned order first
reproduces the objection in the FER relating to Section 3(k) of the
Patents Act – which was, incidentally, not found “outstanding” in the
notice of hearing, which merely sought the appellant’s response
relating to Section 2(1)(ja). It then reproduces part of the drawing of
the apparatus in question, with neither prelude nor preface, and with
no clarification why it does so. The diagram too, incidentally, is not
reproduced in full and, as reproduced, makes no sense whatsoever.
Then follows the single sentence which may, if at all, be regarded as
“reasoning” in the impugned order:
“Here the apparatus explained have no physical presence but only
a method of programming as seen above (204, 222, 212) etc.”
Here, again, there is no reason forthcoming, whatsoever, for this
finding. The impugned order, thereafter, sets out “VUI parameters”
for the claimed invention, followed by a cut-and-paste reproduction of
the objections regarding Section 2(1)(ja) as contained in the notice of
hearing and the FER. Three prior arts, denoted as D1, D2 and again
D1, are referred to therein. There is no reference, whatsoever, to the
appellant’s explanation in response to the objections, and the order
concludes, laconically, with the comment that “the substantive
requirement of the Patents Act, 1970 i.e. section 2(1)(j) are not found
complied with”. In so holding, the Assistant Controller also seems to
have overlooked the fact that the objection was predicated not on
Section 2(1)(j) but on Section 2(1)(ja). The application is ultimately
rejected on the ground of Section 3(k) – which finds no place in the
notice of hearing issued to the appellant – and Section 2(1)(j), which
was never invoked at any stage.
5. Ms. Vindhya S. Mani is correct in her submission that the only
single sentence in the impugned order of ten pages which can be
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likened to any kind of reasoning is this:
“Here the apparatus explained have no physical presence but only
a method of programming as seen above (204, 222, 212) etc.”
6. Apart from the aforesaid sentence, there is no reasoning in the
entire impugned order.
7. The Assistant Controller appears to be thoroughly confused
both as to the nature of the claim for which the application was made
as well as objections raised in the FER and in the notice of hearing.
For example, with respect to the objections relating to Section
2(1)(ja), the impugned order first cuts and pastes the objections in the
FER which is predicated on two prior arts noted as D-1 and D-2.
Thereafter, it cuts and pastes part of notice of hearing and table from
the FER, which refers to a third prior art, also denoted as D-1.
Thereafter, without the courtesy of referring to the prior art with
respect to which the Assistant Controller found a lack of inventive
step, the order merely states that “the substantive requirement of the
Patents Act, 1970, i.e. Section 2(1)(j) are not found complied with”.
In fact, the impugned order reflects that parts – often incomplete – of
various documents have been randomly cut and pasted together,
leaving the reader of the order to divine, for himself, the reason why.
8. This Court is, frankly, aghast at the manner in which the
impugned order has been passed. Such cut-and-paste orders do little
justice to the solemn functions which have been entrusted on the
officers in the office of the Controller of Patents and Designs. It is
solely because of the completely arbitrary manner in which the
impugned order has been passed, that the Court is not in a position to
examine the order on merit. The appellant, having applied for a
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patent, has suffered an FER, a notice of personal hearing and,
thereafter, the impugned and completely incomprehensible order,
rejecting the appellant’s application.
9. It would well for the officers in the office of the Controller of
Patents and Designs, who are discharging such functions, to bear in
mind the fact that grant or rejection of a patent is a serious matter. A
patent is meant to be a recognition of the innovative step that has been
put into a crafting of an invention. Inventions increment the state of
existing scientific knowledge and, thereafter, are of inestimable public
interest. Any decision, whether to grant or refuse a patent has,
therefore, to be informed by due application of mind, which must be
reflected in the decision. Orders refusing applications for grant of a
patent cannot be mechanically passed, as has been done in the present
case.
10. The Officer adjudicating the claim for registration of a patent
must bear in mind the fact that the life of a patent is reckoned from the
date when the application is made, and not from the date when the
patent is granted. Unreasonable delay in grant of a patent results in
reduction of the residual life of the patent, which can itself be a
serious disinclination for inventors who seek to invent new and
innovative methods, products or processes.
11. The impugned order, which cannot be said to satisfy even the
most fundamental requisites of an order adjudicating on a claim for
registration of a patent is, therefore, quashed and set aside.
12. The matter is remanded to the Controller of Patents for
reconsideration. Prior to deciding the matter afresh, the appellant
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Signing Date:15.03.2023
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shall be granted a hearing. Needless to say, the matter would not be
decided by the officer who has passed the impugned order. Let the
aforesaid exercise be completed and order passed within two months
from today.
13. Needless to say, the de novo consideration would proceed
completely uninfluenced by the impugned order.
14. This appeal is allowed accordingly. Miscellaneous applications
does not survive for consideration and stand disposed of.
C.HARI SHANKAR, J
MARCH 14, 2023
rb
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:15.03.2023
13:05:02
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Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:15.03.2023
13:05:02
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