In Signal Pharmaceuticals vs Deputy Controller of Patents, the Madras High Court set aside the impugned order by the Indian Patent Office for being a non-speaking one. Analysing the Court’s decision, Bharathwaj discusses when an order is regarded as non-speaking and assesses the probable reasons for such orders. Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur, and loves books and IP. His previous posts can be accessed here.
Another day, Another Unreasoned Order by the Indian Patent Office: Analyzing Signal Pharmaceuticals vs Deputy Controller
By Bharathwaj Ramakrishnan
Recently, the Madras HC in Signal Pharmaceuticals vs Deputy Controller of Patents quashed the 2019 order of the Controller for being a non-speaking one. In this post, first, I will discuss the judgment in brief, then I will discuss the previous instances wherein the Patent Office has been taken to task by the Courts for issuing unreasoned orders. I’ll later discuss the factors that determine when an order is declared by the Court as an unreasoned or a reasoned order. Finally, I touch on probable factors that might be the reasons for the Controllers to be passing such unreasoned or non-speaking orders.
Summary of the Judgement:
The suit Patent in question was titled “mTOR kinase inhibitors for oncology indications and disease associated with the mTOR/P13K/AKT Pathway” (3500/CHENP/2011). The Controller had issued a rejection order stating that the invention was barred by Section 3(d) (bar against evergreening of Patents) and had not satisfied Section 2(1)(ja) (inventive step). The challenge to the Order by the appellant was premised on 7 points, which can be broadly summarized as the Controller passing an order without taking into account the arguments and evidence presented by the applicant with regard to the invention having an inventive step and not being barred by Section 3(d).
The applicant premised his arguments against the Order on three specific points. The appellant challenged the Controller’s conclusions with regards to the inventive step; invention being barred under Section 3(d); And finally, the most important one for our purposes, the order issued by the Controller was unreasoned as it did not consider all the submissions made by the appellant and that it showed non-application of mind by the Controller.
The Court did not decide the substantial issues of the inventive step and the invention being barred under Section 3(d) but decided that the Order issued by the Controller was unreasoned as he did not take into account the submissions made by the applicant which showed non-application of mind. Consequently, the Court referred the matter back to the Indian Patent Office for fresh consideration. With the case discussed in brief, it’s also necessary and useful to look at previous instances wherein the Courts have come down hard on the Patent Office for issuing unreasoned orders.
Unreasoned Orders and the Patent Office:
The Courts have taken the Patent office to task for issuing non-speaking orders or, in other words, orders that do not speak for themselves nor provide reasons as to why they have reached specific conclusions concerning the Patent application. The Courts have treated the Patent Office as a quasi-judicial authority and hence are understood to have an obligation to ensure natural justice (see here for a wonderful paper written by Prof. Basheer on this issue)
The most recent Delhi HC judgements where the Court has been highly critical of unreasoned orders are Blackberry vs Assistant Controller of Patents (pdf) and Dolby International vs Assistant Controller of Patents (discussed here). In both cases, the Court took a magnifying glass to the rejection order and analyzed and parsed it in search of some reasoning behind the order, but it failed to find much. In Ulm University v. Assistant Controller of Patents (discussed here), the Madras HC concluded that the Controller had issued a cryptic order wherein the Controller without discussing the prior arts concluded that the appellant’s invention lacked an inventive step. Likewise, in Sakata vs Controller of Patents (discussed here), the Madras HC also remanded the case to the Patent Office as the order in question was unreasoned. The Controller, even though he acknowledged that human intervention was involved, concluded that the process claimed to be an essentially biological process but did not give any reasons why he thought so. Later, the issue was examined again and rejected, but this time, the Controller gave reasons and relied on EPO case laws to back his conclusions. It must be pointed out to the readers that there are other instances wherein the HCs have quashed orders as being unreasoned (see here, here).
How Does the Court Conclude Whether an Order is Reasoned or Not?
As discussed above, the courts have taken to task the Patent Office whenever it concluded that the Order passed by the Controller was an unreasoned order or a non-speaking order. It also makes one wonder- when an order is deemed to be unreasoned? The answer to the question might be answered if one looks at the cases (discussed above) and a post written by Prashant Reddy T. (see here). It shows how, for the orders passed by the Controller to be a speaking order, reasons need to be provided as to why a certain conclusion was reached, and also shows how citing relevant judicial precedent can save the order from being declared unreasoned (Sakata case discussed above is a good example). To illustrate this, if an invention is to be objected to as being barred by Section 3(k), it would be necessary to cite the relevant precedent post-Farid Allani (all the developments surrounding Section 3(k) have been discussed in the blog here) and citation and discussion of the same might save the order from being declared as being unreasoned. It is important to note that other countries’ patent offices, such as EPO and UKIPO, are abreast of all the developments in case law (see here and here). It’s not a coincidence that the order that the Madras HC quashed does not cite any case law, and that of the 38-page order, only the last two pages of the order tried to address the arguments raised by the applicant and which, in the end, was found to be insufficient reasoning by the Court. Likewise, inadequate reasoning for rejecting a patent granted in other countries has been grounds on which the order has been set aside (for example, see here).
It must be noted at this juncture that there are instances wherein the Controller has issued well-reasoned orders. To quote a recent example, detailed orders have been issued by the Assistant Controller concerning the patent of addition, which included referencing the Ayyangar Committee report (discussed here). Likewise, there are also instances wherein the Court’s reasoning on an issue has been the subject of intense criticism (for courts being criticized for over-broad injunctions see here, here, and here). Thus, lack of reasoning is not a problem just faced by the Patent Office.
In conclusion, it is safe to say when the Order cites relevant judicial precedent, provides reasoning to the conclusions it has reached, and takes into account the prosecution history in other jurisdictions, there are high chances it would not be declared as an unreasoned order. With the precedents surrounding unreasoned orders discussed one wonders what might be causing the Controllers to issue such unreasoned orders.
Overwork, Quotas and the Nature of Legal Training Provided?
Praharsh, in his post (here), discusses the WIPO report and how the Patent Office officials might be overburdened. There have been instances that have been recorded and discussed in the blog wherein it has been noted that the number of orders issued by the Patent Office for a particular month increased drastically from previous years without any considerable increase in manpower (see here). It has been noted in the blog how examiners are caught between a rock and a hard place, wherein they are held responsible for their exalted position as a quasi-judicial authority. At the same time, performance quotas prevent them from meeting these exalted expectations (see here, here for a detailed post discussing the issues with performance quotas). Lastly, all these unreasoned orders, which the Court is quashing, are also partly due to the lack of reference or discussion of case laws that raises questions as to the type and manner of legal training that is being provided to the Controllers (readers can shed some light on this aspect if they’d like in the comments). Thus, it is essential to recognize that the Courts will hold the Patent Office accountable for its quasi-judicial status, and it’s time for the Patent Office to up its game and live up to its expectations.
The author wishes to thank Swaraj for his valuable input.
Blaming whole office for one order is like saying ALL OFFICER KARE BAD, despite having many best speaking order, student of law is amature to write article.
Greetings,
I wish to counter the conclusions that you have reached with regard to the post.
First I wish to assert that the article is not based on one unreasoned order. I have cited at least 4 cases wherein the court itself has criticized the Patent Office for issuing unreasoned orders.
I request you to kindly go through the observations made by the court in Dolby International, which I have cited in the post, wherein the court has reproduced the entire rejection order and issued a scathing criticism of the fact that the order was unreasoned. Thus, the examples provided in the post are merely illustrative, not exhaustive, as there could be other orders which are unreasoned by the standards of the court and which are not appealed, and likewise, there can also be orders which grant a Patent which, in turn, can be unreasoned, and which would also not be appealed.
Likewise, it is not about the quantity or number of unreasoned orders; if even one order is issued, it does not sit well with the fact that the Patent Office is treated as a quasi-judicial authority as it has the responsibility to issue a reasoned every single time.
Secondly, I wish to state here that I am not blaming the Patent Office; I wish to point towards a persistent problem that has already been recognized by the courts.
Thirdly, I wish to point out that I have cited another post from this blog discussing other orders which were reasoned and had also added to the jurisprudence surrounding Patent law (I am referring to the patent of addition orders, which were earlier discussed in the blog for which I have provided links in the post). Thus, it is wrong to conclude that the post is claiming that the entire Patent Office is issuing unreasoned orders.
Thus, for these reasons, I think the conclusions you have drawn from the post are not accurate.
Regards,
Bharathwaj R
The analysis is reasonably good. A s a common person i have doubt. What happens if the patent controller declares the case to be tough one and prays to God and gets a solution and cites the recent precedent. will it become reasoned as it cites a case precedent by a eminent judge?. I would agree that explanations as to how the conclusion is arrived is important but why is that all submissions need to be considered. Considered – meaning studied and answered. I think, if a patent requires 3 main technical conditions to qualify and if the said patent fails one of the 3 conditions say point 2. Is it not sufficient to reject the patent on that condition and without examining all submissions, provided the submissions are not relevant to the above point 2 ? Would it not save time?
Greetings,
I will address the issues raised point by point
Firstly, In the case of tough cases or edge cases wherein there is scope for deviation (a good example would be a determination under section 3(k) or inventive step, which Adarsh Ramanujan states is a very subjective test), it is reasonable to conclude the court might come to a different conclusion compared to yours or a Controller might come to a different conclusion from yours. However, if the order is to have sufficient technical and legal analysis, the court might say “it is not reasoned correctly” or the controller has misunderstood the rule laid down in the precedents, but it will never declare the order unreasoned or as lacking any reasoning. That is why it is important to note here the Patent of addition orders that I had cited (see https://spicyip.com/2024/10/adding-to-the-jurisprudence-assistant-controllers-analyses-on-the-ayyangar-committees-reservations-to-the-swan-committee-for-patent-of-addition.html)
In the above case, the Controller’s order included a detailed legal analysis of the section with reliance placed on the Ayyangar committee report. Both orders rejected the grant of an addition patent, but I highly doubt that if the order is appealed, any court will declare the order unreasoned.
Secondly,
With regards to the submissions to be taken into account, the submissions by the applicant attempt to show how his invention is eligible for a Patent and a controller in his order determines whether to grant a patent or not. Thus, if the controller is to pass an order, which is rejecting the grant of Patent and has not taken into account the submissions made by the applicant, it is problematic as it is a violation of Natural justice.
Natural justice has three requirements, and they are as follows:
Right against bias
Right to be heard
Right to a reasoned order.
The controller not taking into account the submissions of the applicant means he is violating the final two requirements. Why must the Patent Office abide by natural justice? I request you to check Prof. Basheer’s paper on this, which I have cited in the post.
Thirdly,
I agree with what you have stated. In case the invention is considered to be barred by section 3, there is no need to go into the question of whether it is novel or inventive. I also think it would save time. Especially in the context of strict performance quotas imposed on the examiners and Controllers.
But personally, I would prefer the Controller would take into account all the submissions and deal with them individually and also deal with all objections with equal attention as it ensures little scope for the Order to be declared unreasoned. Also, in other countries, especially USPTO and EPO, wherein I have seen all objections given equal attention and provided sufficient analysis with regard to the invention in the office action. Ideally I would prefer similar treatment from our Patent Office but I can totally understand your reasoning on that front.
Thank you
Indeed a well articulated article. At the same time, I feel court’s are just trying to push the ball back to Patent Office and don’t want to decide the cases on technical merits. Why the
There are indeed very few cases compared to remand back cases that have been critically analysed by the courts.
I understand. But I also think it is reasonable for the court not to decide on the issue on a preliminary basis with regard to its technical merits. As the Delhi HC court observed in Microsoft Licensing vs Controller (see https://indiankanoon.org/doc/52362832/), the Patent Office is better equipped on the technical front to decide the matter, and it is also reasonable for the court, to an extent, to rely on such reasoned conclusions provided by the controller. My hunch is that if more focus is provided on a legal side to the conclusions reached, it is less likely the court will declare the order unreasoned.