SpicyIP Tidbits: IPO deals with formalities and reasons!

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We have two interesting IPO related tidbits for you. Read on ahead!

1. The Delhi Court rebuked the incomprehensible reasoning of the Assistant Controller of Patents & Designs: The incomprehensibility of judgments is not a new issue, and the Supreme Court has even given some tips for judgment writing recently. Surprising no one though, it still happens repeatedly, and this time a court gnashed at a gobbledygook(y) order. The Delhi High Court, in Art Screw Co., Ltd. vs The Assistant Controller of Patents and Designs, has set aside the order passed by the Assistant Controller of Patents & Designs and directed it to look at the patent application afresh and pass a properly reasoned order. The case involves an appeal under Section 117(A) of the Patents Act, against the order passed by the Assistant Controller who denied a patent on an invention titled “Fastener and Fastening Structure” for lacking the inventive step within the meaning of Section 2(1)(ja) of the Patents Act, 1970. The appellant alleged the incomprehensibility of the order, noting that of the 15 pages order, 13 pages just describe the disclosures contained in the alleged prior art, and then two paragraphs are dedicated to the reasoning. The counsel of the Respondent also accepted that he cannot explain the reasoning of the order. Remanding the application to the controller for reconsideration, the court castigated the controller for its obscure order containing unclear reasoning. It noted that “an order which contains reasons that no one can understand is worse than an unreasoned order.” and also remarked that “A finding that an invention for which a patent is sought, lacks in inventive step is a serious finding. It compromises, seriously, even the inventive integrity of the applicant-inventor.” Previously, we have blogged about this issue in detail, see Namratiha’s posts here and here; Prashant’s posts here and here, and Madhulika’s post here.

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2. Pre-grant Opposition is a Right, that can’t be defeated by “technical consideration”, declares the Delhi High Court: Pre-grant oppositions play a pivotal role in the patent parish, preventing the unnecessary granting of undeserved patents. But it is available through a particular mechanism i.e. by filing a particular form and paying particular fees. What happens when this “particularity” is not followed? Can pre-grant opposition still be accepted? The Delhi High Court in the recent case Sonya Kapur vs Controller General Of Patent answered it affirmatively, noting that pre-grant opposition “is a valuable right, and cannot be permitted to be defeated on technical considerations.” The case involves a petition under Article 226 of the Constitution of India filed against respondents, claiming that the patent was granted to a Respondent without considering the pre-grant opposition filed by the petitioner. The respondent’s counsel argued that the opposition was not filed in the proper format and with the procedure, therefore, not considered. Rejecting the argument, the court remanded the patent application to the Patent Office for reconsideration. However, it also noted that no “Patent office … shall not allow any other pre-grant opposition to be filed”. Also, while the order is unclear as to which formality is faulted by the petitioner, it is important to ask – what the ‘technical consideration’ is and to what extent its non-consideration is allowed.  From the order, it appears that “improper format and non-adherence with the procedure” is an ignorable technicality, isn’t that everything regarding the filing of pre-grant opposition? In any case, these questions need consideration, otherwise, it looks like a carte blanche to the filers of the pre-grant opposition.

On a tangential note, it is worth highlighting that on the one hand, the Delhi High Court defines pre-grant opposition as a valuable right, on the other hand, there is an India-UK FTA leaked draft proposing its removal. Previously, the Bombay High Court seems to have diluted its scope, see Swaraj’s post here. Seems like there is a bigger issue we should be very wary of and investigating!


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