Summary
The Delhi High Court has overturned the Indian Patent Office’s decision rejecting Blackberry’s patent application related to communication systems. Reiterating the need for reasoned and speaking orders, the Court held that the refusal lacked adequate justification, particularly concerning claim amendments. The matter has been remanded for a fresh, lawful review by the Controller.
In Blackberry Limited v. The Assistant Controller of Patents and Designs, the Delhi High Court set aside the order refusing Blackberry’s patent application by the Indian Patent Office, reiterating the importance of issuing reasoned and speaking orders that adhere to the principles of natural justice. The matter has been remanded back to the Controller for fresh consideration.
Background
The appeal arose from the refusal of Blackberry’s patent application (No. 1071/DEL/2007) relating to radio resource control between User Equipment (UE) and Universal Terrestrial Radio Access Network (UTRAN). The application was rejected on multiple grounds, including lack of inventive step, non-patentability under Sections 3(k) and 3(m), and non-compliance with disclosure requirements under Section 8 of the Patents Act. Additionally, the amended claims were held to fall outside the scope of the original specification, which was contrary to the provisions of Sections 57 and 59.
Blackberry, in its appeal, contended that the amendments were in the nature of correction or explanation and were fully supported by the original specification.
Court’s Order
The Court, upon prima facie review, observed that impugned order lacked any reasoning as to how the amendments exceeded the permissible scope under Sections 57 and 59. Referring to established precedents, the Court reiterated that amendments in the nature of correction, disclaimer, or explanation, are permissible under Section 59, provided they remain within the scope of the original specification. It further opined that the Controller’s refusal to consider the amended claims, without proper justification, was in breach of the principles of natural justice.
Accordingly, the impugned order was set aside, and the matter was remanded to the Controller for a de novo consideration. The Court specifically directed the Controller to re-examine the allowability of the proposed amendments under Sections 57 and 59, and thereafter address the remaining objections under Sections 2(1)(j), 3(k), 3(m) and 8.
Citation: Blackberry Limited vs Assistant Controller Of Patents And Designs, (H.C. Delhi April 23, 2025). Available at https://indiankanoon.org/doc/188839165/
Article Review: Anjali S.
Accessibility Review: Gaurav Mishra
