Patent examination should not kill the scientific temper of an inventor

This post summarizes the decision of the Madras High Court in the matter of an appeal filed by Industeel France against the orders of the Assistant Controller (hereinafter referred to as ‘Examiner’) refusing Industeel’s patent application bearing number 119/CHENP/2007. The appeal was originally filed in 2015 with the erstwhile IPAB and taken up by the Madras High Court following the abolishment of the Appellate Board.

Facts of the case:

Industeel France filed a PCT national phase application before the Indian patent office on 11th January 2007. The application was examined in 2012 and an examination report was issued to the Applicant. In the examination report, the Examiner objected to the invention under section 3(k) of the Patents Act and cited ten (10) prior art references to demonstrate lack of novelty and non-obviousness.

The Applicant responded to the examination report and a hearing notice was then issued by the Examiner. In the hearing notice, the Examiner abandoned all of the ten (10) prior art references that he had cited in the FER along with objections under section 3(k). The Examiner however raised a new objection under section 3(c) and alleged lack of inventiveness in the light of two (2) new prior art references.

The Applicant attended the hearing and made its submissions in response to the objections raised in the hearing notice. The Examiner then issued a second hearing notice in 2013, in which, he abandoned the two prior arts introduced in the first hearing notice and introduced another set of two (2) new prior arts. The Examiner also chose to abandon his objections under section 3(c). The Applicant attended the hearing and filed its submissions after the hearing. On 16th January 2015 however, the Examiner issued a decision of rejection alleging that the invention was obvious in view of the two (2) prior arts cited in the second hearing notice and that the invention was not patentable under section 3(c).

Court’s findings and analysis:

At the outset, the Court noted that the facts narrated by the Applicant were quite disturbing. In a strongly worded reprimand, the Court stated as follows:

This Court is satisfied that this Controller hardly seems to understand the anxiety of an inventor and having the same patented. There appears to be a strong attitudinal problem with this Controller as he not just appears to be changing the goal post, but seems to be running with the goal post, and expects an applicant for patent to run along with him all the time.”

The court also noted that “When a Controller makes his examination, it has to be a thorough study of the applicant’s specifications and claims. And when a FER is brought out by him, that will form the basis for further examination of any applicant’s entitlement to have the invention patented.  Some times, on going through the response of an applicant to a FER, the Controller may notice certain aspects omitted to be considered during examination and may change the prior arts. But then that should not become an endless exercise for it holds the potential to kill the scientific temper of an inventor.”

On the merits of the order itself, the court noted that the Examiner made a cryptic statement that he was not satisfied with the arguments made on behalf of the appellant without explaining the why and how of it. It was therefore an obvious conclusion, that the order of refusal be set aside and the application be examined de novo by another Controller.

Considering that the application was set to expire in 2025 and had a very short shelf life of less than 15 months, the Court directed that the application be examined and disposed of within four (months) from the date of cognizance of the order by the Controller.

The application has now been granted as patent number 533637 on 18th April 2024.

Conclusion:

The above decision reiterates the need for patent examiners to examine and process applications in a judicious and time-bound manner. Patents are high-value assets for Applicants and inventors alike. Delays in processing of applications and mindlessly citing new objections through a series of hearing notices/examinations can be detrimental to the interests of Applicants and inventors.

Citation: Industeel France v. The Assistant Controller of Patents, (T)CMA(PT)/208/2023 (OA/SR.296/2015/PT/CHN).

Authored by Gaurav Mishra, Patents Team, BananaIP Counsels

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The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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