Patent Application: Non-Appearance Does Not Eliminate Need for Reasoned Order

In a judgment dated July 30, 2024, the Delhi High Court emphasised that the Controller must issue a reasoned and speaking order when deciding on a patent application, regardless of whether the applicant is present at the hearing.[1]

In this case, the appellant challenged the December 2023 order rejecting its patent application due to the non-appearance of its patent attorney at the scheduled hearing following the issuance of the First Examination Report (FER).

Subsequent to said non-appearance, emails were sent by the appellant’s patent attorney to explain that the appellant was facing financial difficulties due to which its attorney was instructed not to attend the hearing. The appellant sought disposal of the application per provisions of the Patents Act, 1970.

The appellant contended that the impugned order did not take into account its detailed response to the FER or supporting documents, nor did it consider that the subject patent had been granted in its favour in nine other jurisdictions.

Accepting the appellant’s contentions, the Court noted that the impugned order neither referred to the response to the objections nor the reasons for the patent application’s rejection. It was held that the non-appearance of the appellant at the hearing could not be the sole basis for passing a decision under Section 15 of the Act. It also noted that there was no indication of intentional abandonment by the appellant.

Given that the Controller’s order was issued only ten days after the hearing, which is shorter than the 15-day period stipulated for filing written statements under Rule 28(7) of the Patents Rules, 2003, the Court granted an additional five days for the appellant to submit written statements. The Court proceeded to remand the matter back to the respondent, with a direction to render its decision within four months.

[1] Star Scientific Limited v. The Controller of Patents and Designs [CA(COMM.IPD-PAT) 20/2024]