[This Post is co-authored by Swaraj, Praharsh, and Sabeeh]
The November 28 order (pdf) of the Madras High Court is being extensively discussed among the patent attorneys circles of India as it deals with a unique situation concerning the timeframe to file a divisional application vis a vis grant of the parent application. The High Court was hearing an appeal by the EU chemical manufacturer BASF SE (Badische Anilin- und Sodafabrik) (appellant/ applicant) filed against a rejection order by the Patent Office for their divisional application (Application No. 201945034726) (pdf). The rejection cited Section 16 which states that a division application cannot be filed after a patent is granted to the parent application. This seems obvious, as considering a divisional application after the grant would have many other repercussions. However, what happens when the parent application patent was granted within just a day of filing the written submissions – and the divisional application comes just a few hours after that! This seems to be what pushed the appeal forward. However, very interestingly, while BASF seems to be (rightfully) emphasising the lack of reasoning in the rejection order, the quicksilver grant order over the parent patent was equally (if not more) problematic, also for being painfully short of reasoning! In this two part post, we’ll talk about the two orders of the Controller. Part I will deal with the grant order, and Part II will discuss the order rejecting the divisional application and its aftermath.
The Curious Case of a Lightning-Fast Grant Order
The parent application (Application No/7210/CHENP/2012) was for an invention relating to a process for mineral oil production. The original application (which eventually became the parent application) had 14 claims. Over the course of prosecution, BASF deleted 5 claims (see here). Eventually, for the parent patent application, 8 claims were allowed, and later a divisional application was filed for the 6 claims that didn’t make it in the parent application (see here).
The hearing for the parent application took place on August 13, 2019 after which BASF filed its written submissions on August 27, 2019 and just after one day the patent on the parent application was granted! This is surprising because usually, the Patent Office takes at least a few days to properly go through the written statement and modify its order accordingly. This was also argued by BASF in their written submission for the division application, that it usually takes a few weeks after the written submissions for the Office to grant a patent. What stands out here is while the Indian Patent Office has generally been among the Offices that take up considerable time to dispose of an application, it moved at a hyperspeed in this case after the written submission was filed by BASF. It makes one wonder- did the concerned Controller consider BASF arguments and amendments thoroughly? Well, the order is painfully short in explaining if the Controller actually did so or not (see below).
The order simply notes that “the applicant has complied with all the requirements as per the Patent Act” and thus the application merits a grant. This in itself is a non-speaking order (readers can read Bharathwaj’s red-hot post on non-speaking orders here). And as has been noted earlier, while applicants are there to appeal non-speaking rejections, there is hardly anyone (basically just post-grant opponents?) who’d appeal against such short grant orders. We have seen time and again (this case included!) the Courts reprimanding the Patent Office for rejecting a patent application without giving any sufficient reasons. In fact, in some cases (like the one discussed here), the Courts have made observations about how these unreasoned rejection orders are bad for the overall patent regime.
Unfortunately, the question that is often ignored is what about these unreasoned grant orders?! Why should these orders by the safekeepers of the Indian Patent regime not attract the same amount of scrutiny and commentary by the Court? As discussed previously, systemic changes (see here and here for Swaraj and Praharsh’s posts on the Patent Rules Amendments and here for Prashant’s post on the draft amendments) have been introduced within the Patent laws of the country which extensively water down the safeguards against bad and deadweight patents. So while the executive has seemingly made it easier to get favorable grant orders, it’s high time it also takes measures to ensure only deserving inventions are granted patents in the first place. Explicit rules can include:
- stating all orders need to be reasoned,
- periodic random auditing of disposed applications (granted and rejected),
- regular legal and technical training to examiners and controllers,
- re-evaluation of ‘application quota’ requirements which may be pushing orders out faster than they are ready,
- ensuring sufficient personnel are hired,
And perhaps many more, but these could be good starting points. [Hattip to participants in a recent roundtable organised by TWN for a discussion that highlighted the potential utility of these points.]
After all, a detailed well-reasoned grant order will ideally be evidence of the quality of the patent, right? Not just instilling more confidence in the patent system but incidentally, it can also help the appellate bodies (and the patentee), especially in cases where the validity of their patent is challenged before the Court, not just in India, but internationally as well. In the race to attain big numbers, it’s high time we realise that the job of the Patent Office is not just to grant patents but to ensure the country is benefiting from high-quality patents, without allowing creators of inventions undeserving of patents to be granted monopolistic rights over their products!