Lack of proper reasoning in patent decisions by the Indian Patent Office (‘IPO‘) has been a cause for grave concern.
In Dolby International AB (‘Dolby’ and/or the ‘Applicant’) v. The Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 10/2021 and I.A. 13552/2021], the Delhi High Court was faced with a similar predicament, and took the opportunity to reiterate the solemn functions to be discharged by the IPO, and the need for it to pass ‘reasoned’ orders when adjudicating whether an invention ought to be granted a Patent or not. The Court opined that the IPO should issue unambiguous, comprehensible and well-reasoned orders while granting or refusing a patent.
In this case, the Court was not in a position to examine the impugned order of the IPO (in which the IPO refused to grant a patent for the subject invention), on merits, owing to its arbitrary nature and lack of sufficient reasoning in the said order.
The Court also observed that the IPO had overlooked the Applicant’s submissions which were filed before the IPO in response to objections raised in the First Examination Report, and that the IPO had rejected the patent application without sufficient justification. The Court further found the grounds of decision in the impugned order to be perplexing and unclear how they led to the conclusion that the invention is not patentable.
The Court, in the entire impugned order, found no persuasive reasoning, except a single sentence, i.e., “Here the apparatus explained have no physical presence but only a method of programming as seen above (204, 222, 212) etc.”, which was considered to be linked to reasoning.”
The Court observed that the impugned order did not even mention the cited prior art documents in relation to purported non-obviousness of the subject invention, instead, the IPO simply concluded that Section 2(1)(j) of the Patents Act, 1970 (the ‘Act’), was not complied with. What was puzzling, was the fact that Section 2(1)(j) of the Act was never invoked at any stage of the prosecution of the subject application before the IPO.
The Court also highlighted that the IPO should bear in mind the significance of patents while granting or refusing a patent applications, stating that “a patent is meant to be a recognition of the innovative step that has been put into a crafting of an invention. Inventions increment the state of existing scientific knowledge and, thereafter, are of inestimable public interest. Any decision, whether to grant or refuse a patent has, therefore, to be informed by due application of mind, which must be reflected in the decision. Orders refusing applications for grant of a patent cannot be mechanically passed, as has been done in the present case.”
The Court further noted that, such orders unreasonably delay patent grants, thereby reducing a patent’s residual life, which discourages inventors who seek to invent new and innovative methods, products or processes.
The Court concluded that the impugned order, which cannot be said to satisfy even the most fundamental requisites of an order adjudicating on a claim for registration of a patent, be quashed and set aside.