Authorities In Patent Office Must Practice Due Application Of Mind In Decisions, Cut-Paste Orders Can’t Sustain: Delhi High Court

The Delhi High Court has observed that the officers of Controller General of Patents, Designs & Trade Mark must practice due application of mind while rendering decisions and that template or “cut-paste” orders must be discouraged and cannot sustain.

While pulling up an Assistant Controller of Patents and Designs for passing a “mechanical order” while refusing an application for grant of patent, Justice Sanjeev Narula observed:

“Reasoning through a speaking order is a vital aspect of the principles of natural justice and is of utmost importance, which needs to be underscored. If the patent office’s orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. The legal proposition that an order of such kind should be supported by reasons, needs no reiteration.”

The court was hearing a plea moved by Blackberry Limited challenging the order passed by Assistant Controller of Patents and Designs refusing its application filed in 2008 for registration of patent for “Text Selection Using a Touch Sensitive Screen of a Handheld Mobile Communication Device.” The impugned order was passed on June 23, 2020.

Setting aside the impugned order, the court observed that the reasons for dismissing Blackberry’s argument were merely a “word-for-word replication” of its claims, adding that no reasoning was discernible from the same.

“Simply remarking that subject invention is not patentable being a mathematical or business method, a computer programme per se, or an algorithm is not sufficient,” the court said.

It added: “Not only does this benefit the applicant, whose rights are likely to be affected, but also assists the Court in ascertaining how the concerned officer applied their minds and reached the impugned conclusion, while exercising judicial review.”

The court also noted that a co-ordinate bench recently passed a similar order wherein it was observed that the officers of the Controller of Patents and Designs office must bear in mind that the question of grant and rejection of a patent is a serious matter.

“Indeed, these words must resonate with the authorities, and it must be ensured that Patent Controller’s officers practice due application of mind while rendering decisions. Well-articulated reasons in such orders would demonstrate that the decision has been made with proper consideration and allows for more effective judicial review, if necessary,” Justice Narula said.

The court remanded the matter back to the office of Controller of Patents for re- consideration.

“Prior to deciding the matter afresh, Appellant shall be granted a hearing. Application for subject invention shall not be decided by the Officer who passed the impugned order,” it said.

Title: BLACKBERRY LIMITED v. ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

Citation: 2023 LiveLaw (Del) 286

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