[The Post has been authored by SpicyIP Intern Suhani Chhaperwal. Suhani is a third-year law student at NLSIU who loves to write on IP and tech issues. Her previous posts can be accessed here.]
After a plethora of orders over the last couple of years (see below) directing the Controller to pass reasoned orders, on February 24, we saw another drop in this bucket. The Controller had rejected a patent application by Arcturus Therapeutics for the applicant’s inability to file its second written submission on time. Setting aside the Controller’s order, the Court held that it should have passed a reasoned order taking into account Arcturus’ reply to the first examination report (FER), and the other written submission. Interestingly, while remanding the matter back to the Controller, the Court also directed it to consider the information submitted by the applicant after the initial deadline. Can the Controller be directed to consider this information? Also, what does this tell about the quality of patent grant/ rejection orders? We’ll take a quick look at these pressing questions in this post.
Brief Facts and Contentions of the Parties
The present appeal was filed by Arcturus Therapeutics under Section 117A of the Patents Act, 1970, challenging the rejection of Indian Patent Application No. 201617019205, titled “Ionizable Cationic Lipid for RNA Delivery.” The Patent Office refused the application solely on procedural grounds, citing a delay in filing additional written submissions.
After submitting the response for the FER, the appellant had attended two hearings and was granted time to submit additional data. However, when the appellant was not able to file the required information on time, the Controller rejected the patent application on July 25, 2023. Co-incidentally, on the same date, the applicant belatedly submitted the required written submission. The appellant justified the delay by stating that the submission entailed extensive empirical studies and thus, it was unable to file the submission on time. The appellant also argued that the impugned order was devoid of any substantive analysis on the merits of the invention, merely refusing the patent on delay.
Accepting the appeal, the Court held that the delay in filing of additional written submissions is a mere procedural deficiency and such a rejection might have serious consequences on the appellant’s invention. The Court asserted that the application should be evaluated on its merits, in accordance with the principles of natural justice. The Court held that even if there was a delay, the Patent Controller should have passed a reasoned order taking into consideration the objections raised in the FER, the reply thereto, the earlier written submissions and the submissions made orally during the two hearings.
While the Court remanded the matter back to the Controller for fresh hearing, it directed the Controller to examine the belatedly filed Written Submissions as well. This raises a question whether Patent Rules permit the Controller to consider such submissions filed belatedly. Under Rule 138 of the Patent Rules, 2003, the Controller had discretionary power to extend time limits or to condone delays for one month. This rule has now been changed after the 2024 amendments but considering that the application was filed and processed before 2024, technically 2023 Rules should apply in this matter, right? Also in this case an extension was already granted to the appellant on May 12, 2023. So should the Court be directing the Controller to take this belated information into consideration? Furthermore, if the Court can direct the Controller to consider this belated information, shouldn’t some additional fees be imposed upon the applicant?
The Saga of Unreasoned Orders Continues….
As mentioned above, this is not the first instance where the Patent Controller has rejected the patent application without providing the reasons for such rejection. The problem of unreasoned order became so concerning that in the past, courts have directed officers to undergo training for writing orders. In Signal Pharmaceuticals v. Deputy Controller of Patents (see here), the Controller passed an order without taking into consideration the arguments and evidence produced by the applicant. Consequently, the Court held it as an unreasoned order remanding it back to the patent office.
In Blackberry Limited v. Assistant Controller on Patent and Designs, the Patent Controller rejected the patent application without providing any substantive grounds. The Court held that reasoning through a speaking order is a vital aspect of the principles of natural justice. The Court further held that Such kind of mechanical, template and cut-and-paste orders cannot sustain and must be stridently discouraged. There should be due application of mind and well-articulated reasons for rejection of patent application.
Similarly, in the case of Ulm University v. Asst. Controller of Patents and Designs (analyzed here), the Patent Controller did not provide the appellant with any reasons on how the patent application of the appellant is obvious to a person skilled in the art and none. The Court found this decision of the Controller cryptic and remanded the matter back to Patent Office.
The problem of unreasoned orders can also be seen in the case of patent grants as well (see here and here). This poses a bigger issue since unreasoned rejection orders are appealed against by the applicants, unreasoned grant orders are seldom brought to the attention of the courts.. Justice Ravi Krishan Kapur in Guangdong Oppo Mobile vs The Controller Of Patents And Designs gave his insights into what the Controller should consider while passing an order. The Court emphasized that a well-reasoned rejection order, therefore, must explicitly state the statutory basis, prior art references, and the rationale behind the decision, ensuring compliance with principles of natural justice. Perhaps it’s high time that some sort of mechanism like annual or biannual audit is implemented in place to ensure that these above directives are followed on all the orders passed by the Patent Office.