In Star Scientific Limited v. The Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 20/2024, the Delhi High Court reversed the decision of the Controller of Patents and Designs which had rejected patent application no. 202017011947 on the ground that the Applicant/ Appellant did not attend the pre-scheduled hearing (and consequently, that all the objections raised raised in the hearing notice remained outstanding/ unanswered).

Facts of the Case

Star Scientific Limited (the ‘Applicant’/ ‘Appellant’) filed a National Phase Patent Application No. 202017011947 with the Indian Patent Office (‘IPO’ based on PCT application no. PCT/AU2018/050895. The First Examination Report (‘FER’) was issued after the filing of the  request for examination. Subsequently, the Appellant filed a detailed response (i.e., written submissions) to the FER along with supporting documents and proposed claim amendments.

The Controller fixed a hearing. However, the Appellant’s agent (the ‘Agent’) neither attended the hearing (in the absence of instructions from the Appellant) nor sought an adjournment of the said hearing. Moreover, the Agent, in response to a phone call from the Controller, informed the latter by email that due to the Appellant’s financial difficulties, the hearing could not be attended, and the Agent sought disposal of the patent application pursuant to the requisite provisions of the Patents Act, 1970 (as amended) (the ‘Act’).

The Controller subsequently refused the patent application, concluding that all the objections raised in the hearing notice remained outstanding and unresolved due to non-attendance at the hearing by the Appellant.

An appeal was filed before the High Court. The main issue before the Court was whether the patent application can be refused merely on the basis of the failure to attend the hearing by the Appellant, despite the prior filing of a detailed response to the FER.

Court’s observations and decision

The Court opined that the impugned order is devoid of any analysis regarding the objections raised regarding the patent application. Further, the Court held that the mere absence of the Appellant at the hearing, cannot be the basis for the rejection of the patent application under the Act.

The Court relied on several precedents, including Ferid Allani, wherein it was held that the abandonment of a patent application requires an “express intention/ conscious act” by the Applicant. Ferid Allani established that abandonment is never presumed. Additionally, referring to Telefonaktiebolaget Lm Ericsson (Publ) v. Union of India; and Merck Serono S.A. v. Union of India, the Court clarified that the Controller ought to pass a reasoned order, considering the submissions of the Appellant in its reply to the FER and the documents filed along with the said reply. Mere non-attendance of the Appellant at the hearing will not be deemed to be an abandonment of the application unless it was clear from the party’s explicit actions.

The Court also noted that the Controller did not provide any reasoning as to why the patent application (which had already been granted in multiple jurisdictions) was rejected in India. As ruled in Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents, the grant of patents for same invention in several jurisdictions is a relevant consideration determining whether the application in India ought to be granted; indeed, while the said registrations in the other jurisdictions are not binding on the IPO, the same may be of persuasive value.

In light thereof inter alia the Court reversed the Controller’s decision and remanded the matter back to the IPO for fresh consideration on merits.