The surge in patent filings and government initiatives highlight India’s commitment to fostering innovation. Despite challenges faced by the Indian Patent Office and the applicants, the principles of natural Justice remain pivotal. A recent ruling by the Delhi High Court in the matter of Microsoft Technology Licensing LLC v. The Assistant Controller of Patents and Designs emphasized the importance of upholding these principles in intellectual property matters, further solidifying India’s role in the evolving landscape of innovation.
Factual matrix:
An Appeal was filed by the Appellant (i.e., Microsoft Technology Licensing LLC) seeking inter alia, an order to set aside the decision of the Respondent (i.e., the Controller General of Patents and Designs). The Respondent had refused an application for a patent titled “Discovery of Secure Network Enclaves” bearing number 9642/DELNP/20011, on the ground of lack of inventive step and indefiniteness of Claim 2.
Appellant’s submissions:
The Appellant contended that the Respondent’s objection to Claim 2 was not raised before the impugned order was issued, thereby violating the principles of natural justice. They also argued that the analysis and claim mapping for D2 were not provided in the hearing notice, leading them to believe that the objection was not valid. Additionally, the Appellant highlighted that D1 and D2 were cited by the European Patent Office during the corresponding EP application, where the appellant’s arguments were found persuasive.
Arguments presented by Respondent:
The Respondent defended the impugned order and submitted that there is no infirmity therein.
Findings of the Court
The Court proceeded to outline the requirements of the Patents Act, 1970 (as amended), which mandates inter alia a detailed and comprehensive description of the invention, its function, use, and the method for its implementation as well as disclosure of the most effective way of carrying out the invention. Compliance with this requirement is essential for patent applications.
Furthermore, the Court emphasized the importance of the Respondent clearly communicating any deficiencies in the patent application through the First Examination Report (‘FER’) and/or the hearing notice. This ensures a fair chance for the Applicant to address and rectify any issues. Lack of a detailed explanation for a claim’s non-compliance with the statutory requirements, renders any determination legally unsound.
Moreover, the Court noted a procedural irregularity in the failure to mention crucial documents like D2 in the hearing notice, depriving the Appellant of a proper chance to respond. Including D3 in the impugned order without prior mention of the same in the FER was also deemed unfair. The Court also acknowledged the relevance of foreign prosecution history in considering objections related to D1 and D2. Despite initial objections, the EPO eventually granted a patent for the same claim.
The Court also mentioned that it is not recommending that the Indian Patent Office should automatically mirror the decisions of the EPO. Instead, the Court believes that the successful amendment and approval of claims by the EPO could offer important insights for the thorough examination process conducted by the Respondent. The Court set aside the impugned order and remanded the matter back to the Respondent for de novo consideration.