On April 28, 2023, Justice Amit Bansal of the Delhi High Court passed three separate orders, all dealing with a similar issue- unclear, unreasoned orders from the Patent Office and the Trademark Registry (IP Offices) that rejected the patent/ trademark applications. While there has been a recent rising trend of such orders from the court (see here, here, here, here and here) wherein the IP Offices’ orders were remanded back for being cryptic, unclear on the grounds of objection, rejecting the application on new grounds etc., passing three such orders in one day is surely worth noting.
A Judge’s Take on the Issue
Interestingly, apart from the judges who have expressed their concerns about the quality of a few orders from the IP Offices, in the abovementioned judicial orders, there are other IP judges as well who share the same sentiment and have expressed it in a more general sense, beyond judicial orders. Recently, the Delhi High Court IPD released its Annual Report 2022-23 on the World IP Day 2023 (April 26, 2023) highlighting the experiences of the present and past judges of the IPD and the work done so far by the IPD. Therein, a former member of the IPD, Justice Jyoti Singh in her note titled “Good Practices for IP Offices” highlighted how “in the recent past” several matters have been remanded back to the IP Offices, for lack of sufficient reasoning on part of these order. In her note Justice Singh states that “in a few cases, all the grounds raised by the opponents opposing patents were not considered, rejections were given on the basis of prior arts not cited in the FER and hearing notice, and also on the grounds of non-patentability, which were never raised during prosecution…” and termed this as a blatant violation of the principles of Natural Justice.
Justice Singh further writes about the preferred appeals against the rejection orders wherein the Controller’s analysis on “inventive step” was not clear, and about the cases where re-grant oppositions were disposed of within an extremely short span of time.
She then moves to write about the issues with the functioning of the Trademarks Registry that includes “excessive pendency of applications for registration of trademarks and inclusion of well-known trademarks in the list maintained with the Registry, delay in dispatching examination reports, faulty and illegible advertisements, renewal applications though filed being overlooked, marks being cited in opposition to registration of a trademark without ascertaining if they are ‘refused’ or ‘abandoned’, opportunity of hearing not granted though record shows otherwise, leading to prolonged and unnecessary litigation.” [Sidenote: We’ll put out an in-depth assessment of the information regarding IPD’s performance, as highlighted in this report, in an upcoming post.]
The Three Orders
Now, let’s look at the three cases in hand.
Rosemount Inc. v. Deputy Controller of Patent and Designs: Emphasis on a speaking order by the Controller
The dispute pertained to Patent Application no. 1055/DELNP/2009 for the invention –“Process Device with Density Measurement” and the subsequent rejection order (dt July 7, 2017) passed by the Controller. The Controller had rejected the application on the ground of lack of inventive step in light of the previously cited prior art. However, in the appeal, the appellant contended that it had made sufficient responses to the FER and hearing notice, highlighting how the invention is distinguished from the prior art. But regardless of its submissions, the Controller passed the impugned “cryptic” order, without dealing with the submissions made by the appellant, simply explaining what the prior art is and holding “that ( the appellant’s inventions’) amended claim 1 lacks in inventive step u/s 2(1)(j) read with (ja) as they shall be obvious to a person skilled in the art when taught by the documents.”
The court after perusing through the impugned order held that the impugned order was passed without going through the explanation/ justification offered by the appellant. The court then relied on Agriboard International LLC v. Deputy Controller of Patents and Designs, Auckland Uniservices Limited v. Assistant Controller of Patents and Designs, N.V. Satheesh Madhav and Anr. v. Deputy Controller of Patents and Designs and Alfred Von Schukmann v. The Controller General of Patents, Designs and Trademarks and Ors to hold that the patent office must pass a speaking order to analyze the existing knowledge and how the subject invention lacks prior art.
Grupo Petrotemex v. Controller of Patents: Application cannot be rejected on new grounds of objections that were not raised previously
Though the order does not mention the subject invention, it states that the dispute pertained to the Patent Application no.965/DELNP/2006 and the patent office’s rejection order (dt. June 7, 2016) by citing new, previously unmentioned, grounds. The appellant argued that in the FER and the hearing notice, lack of novelty was cited as an objection. However, the impugned order, which was passed on the same day as the date of the hearing, rejected the application on the ground of lack of inventiveness u/s 2(1)(ja). The court perused the impugned order and remanded the matter back to the patent office, to hold a fresh hearing, consider the material already existing on the record and pass a reasoned order.
A similar issue arose sometime back in January 2023 in Perkinelmer Health Sciences Inc. vs Controller of Patents, when the IPO had raised fresh objections during the hearing and the court in specific terms explained that the IPO must make the applicant aware of all the grounds of objection before the hearing. (see my post on this order here.)
Shell Brands International AG v. Registrar of Trademarks: Section 11(1) objection must cite allegedly similar marks
Now moving to the problematic order from the Trademark Registry. The appeal against the Registry’s order dt. March 15, 2018, was filed before the IPAB and was subsequently transferred after the enactment of the Tribunal Reforms Act. The application sought protection over only the combination of the colours and not in the subject drum device. The Registrar rejected the application on the grounds under Section 11(1) (subject mark being similar or identical to an earlier mark); Section 9(1)(b) (subject mark being descriptive); and failure to file the user affidavit.
After perusing the matter and arguments advanced by the parties, the court observed that the Registrar cannot reject a mark on grounds of similarity with an earlier mark, without citing the alleged similar mark! The court further noted that the objection with regard to Section 9(1)(b) was not sustainable as the Registrar had merely reproduced the provision, without explaining how the subject mark falls under any category as explained in Section 9 (1)(b). On the appellant’s failure to file the user affidavit, the court clarified that the requirement for user affidavit under Rule 27 was not mandatory and was subjected to the discretion of the Registrar. In the present case, the Registrar had not demanded the user affidavit from the appellant, and thus, the court held, that the ground for rejecting the application for not submitting the user affidavit is not sustainable. Setting aside the impugned order, the court directed the Registrar to publish the mark within 3 months.
But Why do These Orders Need to be Well Reasoned?
Speaking specifically about patent disputes, in the Rosemount Inc order, the court relied on an earlier decision in Agriboard International LLC v. Deputy Controller of Patents and Designs, where the court had attributed speaking orders i.e. orders whose reasons speak for themselves, with Natural Justice and had directed that while rejecting an invention for lacking inventive step, the Controller must consider:-
- The invention that is disclosed in the prior art
- The subject invention
- The manner in which subject invention is obvious to a person skilled in the art.
However, the need for a reasoned, speaking order is not only necessary in case of the Controller rejecting a patent application but also in the cases where a patent is granted, as a general matter of practice.
Even when granted, patents are susceptible to revocation proceedings and post-grant oppositions, and in such cases, the appellate body relies on the findings of the Controller to have a well-formed opinion over the matter. The court has discussed the importance of speaking orders for an appellate body in Blackberry Limited v. Assistant Controller of Patents and was previously highlighted in a co-authored post by Swaraj and I, on the Delhi High Court’s order in Dolby International v. Asst. Controller of Patents and Designs.
Apart from assistance to the appellant authority, the well-reasoned orders are also helpful in determining the scope of infringement (if any). This was also apparent in a recent patent dispute before the Karnataka High Court. In Innoviti Payment Solutions v. Pine IndustriesInnoviti Payment Solutions v. Pine Industries, the Karnataka High Court was considering whether to vacate the interim order imposed against Pine Industries or not. Relying on the Controller’s order, the court held that Innoviti Solution was exerting its rights over something that falls outside the purview of the accepted lists of claims, on which the patent is granted, and vacated the interim injunction order that was previously passed by the trial court. (See Rohan and Srujan’s co-authored post on this here.)
Another reason why the need for a speaking order should be a general principle and not only be emphasized in the cases concerning unreasoned rejection orders is to make sure that there is no natural inclination towards non-speaking orders, granting the patent.
The problem of unreasoned, unsubstantiated orders from the IP Offices is not only specific to New Delhi, but is an issue whose jolt is felt across jurisdictions. For instance, the Bombay High Court in Ceres Intellectual Property Company Limited v. Controller of Patent, had set aside the impugned order rejecting a patent application on the direction of the Dept. of Atomic Energy. The court held that while rejecting an application for an invention related to atomic energy is engulfed in Section 20 of the Atomic Energy Act, the same must be properly reflected in the reasons of the order. Are there any other similar orders from other jurisdictions, that our readers may know of? Feel free to drop a comment and let us know about them!