Introduction

In a significant ruling on July 30, 2024, in Star Scientific Limited v. The Controller of Patents and Designs, the Delhi High Court overturned the decision of the Controller of Patents and Designs, which had refused the grant of a patent to Star Scientific Limited. The Court held that the mere non-attendance of a hearing by the applicant cannot be grounds for rejecting a patent application, especially when detailed responses to the First Examination Report (FER) have been filed.

Background

The case revolves around National Phase Patent Application No. 202017011947, titled “Composition, Methods, and Apparatuses for Catalytic Combustion,” filed by Star Scientific Limited at the Indian Patent Office, New Delhi. The application, based on PCT Application No. PCT/AU2018/050895 dated August 22, 2018, relates to the catalytic combustion of clean fuel mixtures for the utilization of clean energy sources.

A request for examination was filed on June 25, 2021, and the First Examination Report (FER) was issued on August 23, 2021. The appellant responded to the FER on February 23, 2022, amending the claims from 1-53 to 1-22, including two independent claims. However, when the Controller scheduled a hearing on December 8, 2023, the appellant’s patent attorney did not attend due to financial difficulties.

The Controller subsequently refused the patent application on December 18, 2023, leading to the present appeal.

The Controller’s final rejection order was brief and primarily focused on the fact that the appellant’s patent attorney did not attend the scheduled hearing on December 8, 2023. As a result, the Controller concluded that all the objections raised in the hearing notice remained outstanding and unresolved. Consequently, the Controller refused to proceed with the grant of the patent under Section 15 of the Patents Act, 1970.

The order lacked a detailed analysis of the appellant’s response to the First Examination Report (FER) and did not address the merits of the appellant’s arguments or the amendments made to the claims. The rejection was largely procedural, based on the non-attendance of the hearing, rather than a substantive evaluation of the patentability of the invention.

Issues

The primary issue before the Court was whether the Controller of Patents and Designs was justified in rejecting the patent application solely on the grounds of non-attendance at the scheduled hearing, despite the appellant having filed a detailed response to the FER.

Appellant’s Contentions

The appellant argued that:

1. A detailed reply to the FER was filed, addressing all objections, which should have been considered by the Controller before passing the final order.
2. The Controller was obligated under Section 14 of the Patents Act and Rule 28(5) of the Patent Rules to pass a reasoned order, considering the appellant’s submissions.
3. The non-attendance at the hearing due to financial difficulties should not be construed as an abandonment of the application.
4. The patent had been granted in nine other countries, which should have been a relevant factor in the consideration of the application.
5. The Controller passed the rejection order within ten days, without giving the appellant the opportunity to file written submissions as allowed under Rule 28(7) of the Patent Rules.

Court’s Observations

The Court observed that the Controller’s order lacked any specific reasoning or analysis of the objections raised in the FER. The mere absence of the appellant at the hearing could not justify the rejection of the patent application.

The Court referred to several precedents to arrive at its decision. For example, in Ferid Allani, it was held that abandonment of a patent application requires a “conscious act” by the applicant, a principle that was not followed by the Controller in this case. Ferid Allani established that abandonment cannot be presumed merely due to procedural lapses. Additionally, the Court cited Telefonaktiebolaget Lm Ericsson (Publ) v. Union of Indiato highlight that even if an applicant fails to attend a hearing, the Controller is obligated to pass a reasoned order under Section 15 of the Patents Act, considering the merits of the application. The Court also referred to Merck Serono S.A. v. Union of India and Others, which reiterated that a patent application can only be deemed abandoned if the applicant neglects to pursue it.

The Court also noted that the Controller failed to consider the fact that the patent had already been granted in multiple jurisdictions, which is an important factor in determining the patentability of the invention in India, as held in Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents.

In light of these observations, the Court set aside the Controller’s decision and remanded the matter for fresh consideration. The Controller was directed to decide the matter on its merits within four months, allowing the appellant to file written submissions within five days.

Ratio Decendi

1. Necessity of a Reasoned Order: Under Section 15 of the Patents Act, 1970, the Controller is required to issue a reasoned and speaking order when deciding on the grant or refusal of a patent. This is so even if the applicant fails to attend a scheduled hearing.
2. Procedural Fairness and Adherence to Rules: Controllers are required to adhere to Rule 28(5) of the Patent Rules, which requires the Controller to make a decision based on the applicant’s written submissions, even if the applicant does not attend the hearing.

Our Analysis and Conclusion

The Delhi High Court’s judgment in Star Scientific Limited v. The Controller of Patents and Designs serves as a vital reaffirmation of the principles of procedural fairness in the patent application process. The decision highlights the importance of transparency and reasoned decision-making, which are fundamental to maintaining trust in the patent system in India

One of the most critical aspects of this judgment is the court’s insistence that the Controller of Patents must engage substantively with the responses and evidence provided by applicants. This requirement ensures that decisions are not merely procedural but are grounded in a thorough analysis of the merits of the case. By highlighting the need for a reasoned order, the court has set a clear standard that protects applicants from arbitrary decisions and reinforces the accountability of the patent office.

Moreover, the Court’s emphasis on considering global patent grants reflects a broader understanding of the interconnected nature of intellectual property rights in a globalized world. Ignoring such relevant information could lead to inconsistencies and undermine the integrity of the patent system.