Delhi High Court Dismisses Google's Appeal Against Rejection Of Patent, Imposes ₹1 Lakh Costs

The Delhi High Court has imposed Rs. 1 lakh costs on Google LLC while dismissing its appeal against the refusal of the grant of a patent by the Assistant Controller of Patents and Designs in 2019.

Justice Prathiba M Singh ordered that 50% of the costs shall be deposited by Google with the office of Controller General of Patents, Designs and Trade Marks (CGPTDM) and remaining to be paid to the Union Government's standing counsel.

Google had filed the appeal against the rejection of its application for a grant of a patent titled “Managing Instant Messaging Sessions on Multiple Devices.” The application was refused by the Assistant Controller of Patents and Designs under Section 15 of the Patents Act.

The patent application was refused on the grounds of lack of novelty and inventive step.

The court said that Google not only presented wrong facts in the appeal but also failed to disclose the information regarding the refusal of its EU patent application as well as the divisional application which was filed consequently.

“Thus, the disclosure requirements under the Act are not complied with,” the court said.

It added that despite the submissions made on behalf of Google, the subject invention was not entitled to grant of a patent in view of the lack of inventive step.

It noted that one of the submissions made on behalf of Google was that the corresponding EU application of the subject patent was abandoned and not rejected by the EPO. However, the court said that the counsel for the Controller of Patents pointed out that the corresponding subject patent application was not abandoned, but was rejected by the EPO.

“Considering the submission made that the EPO application was abandoned and coupled with the fact that the corresponding EU application for the subject patent comprised of not one but two applications, including a divisional application, and that they both were rejected for lack of inventive step, in the present appeal costs are also liable to be imposed,” the court said.

Counsel for Appellant: Mr. Vineet Rohilla, Mr. Pankaj Soni, Mr. Debashish Banerjee, Mr. Ankush Verma and Ms. Vaishali Joshi, Advs

Counsel for Respondent: Mr. Arjun Mahajan, SPC with Mr. Apoorv Upmanyu, Advocate

Title: GOOGLE LLC v. THE CONTROLLER OF PATENTS

Citation: 2024 LiveLaw (Del) 393

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