Principles of audi alteram partem have to be followed by Patent Office while rejecting application: Delhi HC

N.V. Satheesh Madhav Vs Deputy Controller of Patents And Designs (Delhi High Court)

Conclusion: The Hon’ble Delhi High Court while relying on Hon’ble Supreme Court Judgments observed that has observed that the principles of audi alteram partem have to be followed by the Patent Office while rejecting a patent application.

Facts: The present appeal has been filed under Section 117A(2) of The Patents Act, 1970 (hereinafter “the Act”) impugns the order dated 14^th September, 2018 passed by the Deputy Controller of Patents and Designs, whereby the appellant’s application for grant of the patent bearing no.2924/DEL/2008 has been refused.

The aforesaid patent application was filed with provisional specification on 23^rd December, 2008 at the Delhi Patent Office. Subsequently, a complete specification with ten claims was filed with the Patent Office. Along with the complete specification, the appellants also filed a duly filled Form 18 as the Request for Examination of the said patent application on 23^rd December, 2009. A First Examination Report (FER) was issued on 30^th March, 2017, in terms of which, an objection was raised that the claims lack inventive step in view of the prior-art documents referred to as D1, D2, D3, D4, D5 and D6 and therefore, do not constitute an invention under Section 2(1)(j) of the Act. The FER also raised an objection under Section 3(h) of the Act stating that the subject matter claimed in claims 1-6, claim 9 and claim 10 relates to a method of agriculture and, therefore, not patentable. In addition to the objections of inventive step and non-patentable subject matter, the FER also raised objections on the scope and clarity & conciseness of the claims. It was also stated that as per Section 6 of the Biological Diversity Act, 2002 permission needs to be obtained from the National Biodiversity Authority before the grant of a patent for subject matter involving biological material from India. Additionally, it was stated in the FER that the drawings need to be filed as per Rule 15(6) of the Patent Rules, 2003 (as amended).

Pursuant thereto, the claims were amended by the appellants and amended claims were filed. In view of the objections raised in the FER under Section 3(h) of the Act, the appellants, vide their reply dated 26^th September, 2017 to the FER, amended their claims and submitted amended claims 1 to 3. Amended claim 1 is in respect of the bio-bed with layers of non-absorbent cotton.  In the hearing notice dated 9^th April, 2018, the Deputy Controller dropped the objection pertaining to non-patentability under Section 3(h) of the Act. However, the Deputy Controller maintained the objection relating to lack of ‘inventive steps’ and ‘scope of claim 2’ while raising a new objection in respect of non-patentability in terms of Section 3(d) of the Act.

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