--- title: "Delhi High Court Reverses Patent Rejection And Emphasizes Substantive Review Over Procedural Compliance" date: 2024-08-27 author: "King Stubb & Kasiva" url: https://ksandk.com/newsletter/delhi-high-court-patent-rejection-emphasizes/ --- # Delhi High Court Reverses Patent Rejection And Emphasizes Substantive Review Over Procedural Compliance Posted On - 27 August, 2024 • By - King Stubb & Kasiva ## Introduction In a recent decision, the Delhi High Court delivered a judgment in the case of **Star Scientific Limited v. The Controller of Patents and Designs**.[[1]](#_ftn1) The case centered on Star Scientific Limited’s appeal against the Controller’s decision to reject their patent application solely due to the company’s absence at a hearing. The Court ruled in favor of Star Scientific Limited. The judgment emphasizes that a procedural lapse like missing a hearing should not be the sole cause for patent rejection. The Court directed the Controller to re-evaluate the application based on its merits and issue a well-reasoned decision. ## Brief Facts ### Patent Application - The Appellant filed National Phase Patent Application No. 202017011947 for “Composition, Methods, and Apparatuses for Catalytic Combustion.” - The application related to the catalytic combustion of clean fuel mixtures. ### Patent Application Process - Request for examination filed on 25th June 2021, thereafter the first examination report (FER) was issued on 23rd August 2021. - The Appellant further filed a detailed response to FER on 23rd February 2022, amending claims from 1-53 to 1-22. ### Hearing and Non-Attendance - A hearing notice was issued and 8th December 202 was set for the hearing date. - The Appellant’s counsel did not attend due to a lack of instructions. - The Appellant informed the Controller of financial difficulties and requested disposal on 15th and 18th December 2023. ### Rejection of Patent Application and Appeal - The controller issued an impugned order on 18th December 2023, refusing the patent application. - The Appellant sent multiple emails and a representation to revive the patent application in March 2024. - No response was received, leading to the present appeal. ## Arguments of the Parties ### Appellant’s Submissions - The Appellant filed a detailed reply to the First Examination Report (FER) on 23rd February 2023 addressing all objections raised. - The controller was obligated to pass a reasoned order considering the Appellant’s submissions under Section 14 of the Patents Act and Rule 28(5) of the Patent Rules, 2003. - Non-attendance of the hearing does not constitute abandonment of the application. The Appellant communicated financial difficulties and requested disposal. - The Appellant missed relevant emails due to inadvertence and server upgradation, leading to the Patent Attorney’s non-attendance. - Patent grants in nine other countries support the grant of the patent in India. - Amended claims were submitted to address the Controller’s objections, warranting a decision on merit through a reasoned order. - The Appellant was entitled to file written submissions within fifteen days under Rule 28 of the Patent Rules, but the Controller passed the order within ten days. ### Respondent’s Submissions - The appeal is misconceived as the impugned order was passed per the Patent Act and Rules. - The Appellant approached the court with unclean hands by making contradictory statements about financial difficulties and inadvertence/server upgradation. - The Appellant failed to explain the actual reason for non-attendance at the hearing and did not provide proof of financial difficulties. - Appellant’s claim of financial difficulties is false and misleading considering its status as a leading Hydrogen Research and Development Company with patent grants in various countries. - The Appellant did not provide proof of server upgradation. - The Appellant’s reply to the FER contained substantial amendments, making it insufficient without addressing objections to the hearing notice. - Communications from the Appellant’s Patent Attorney on 15th and 18th December 2023 indicate a conscious decision to abandon the application. ## The Court’s Decision ### Court’s Decision - The impugned order rejecting the application is set aside. - The matter is remanded back to the Controller for fresh consideration. ### Reasons for the Decision - **Non-attendance at Hearing does not Justify Rejection**: Simply not attending a hearing does not warrant application rejection under Section 15 of the Patents Act (1970). The Controller failed to consider the Appellant’s detailed reply to the First Examination Report (FER). - **Lack of Speaking Order**: The Controller’s order lacked reasoning. It did not analyze the objections raised in the FER or the Appellant’s response. A speaking order considering the Appellant’s reply to the FER was required under Section 11 of the Patents Act. - **Abandonment Not Established**: The Appellant’s request for disposal through emails does not constitute abandonment. Abandonment requires a conscious decision to withdraw the application, which was not evident here. ### Precedents Cited - **Ferid Allani v. Union of India & Others (Para 12)**: Abandonment requires a conscious act by the applicant, not a presumption.[[2]](#_ftn2) - **Telefonaktiebolaget Lm Ericsson (Publ) v. Union of India & Others (Para 13-18)**: Application abandonment occurs only when the applicant fails to address objections or request an extension. The Appellant in this case had already filed a reply to the FER.[[3]](#_ftn3) - **Merck Serono S.A. v. Union of India & Others (Para 14)**: An application is deemed abandoned only when the applicant fails to pursue it. Here, the Appellant provided explanations for objections raised in the FER and SER.[[4]](#_ftn4) - **FMC Corporation v. The Controller of Patents (Para 17)**: Even if written submissions are not filed on time, the Controller must consider objections, replies, and oral submissions during the hearing, and pass a reasoned order. Here, the impugned order lacked reasoning despite a detailed reply by the Appellant.[[5]](#_ftn5) - **Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents (Para 18)**: The inventive step acknowledged in corresponding applications of other countries should be considered while determining patentability. The Controller failed to consider this aspect.[[6]](#_ftn6) - **Huhtamaki Oyj and Another v. Controller of Patents (Para 21)**: Every order rejecting a patent application or accepting/rejecting opposition must be reasoned and speaking, addressing each objection systematically.[[7]](#_ftn7) ### Directions to the Controller - The Controller must reconsider the application. - The Appellant can file written submissions within five days of this judgment. - The Controller can decide at their discretion whether to grant the Appellant another hearing. - The Controller must decide the matter on merits within four months. ## Analysis and Conclusion The Court’s decision to set aside the Controller’s order and remand the case for reconsideration is well-founded. The Controller’s decision to reject the patent application solely based on the Appellant’s non-attendance at the hearing is a procedural overreach. The core issue lies in the Controller’s failure to conduct a substantive examination of the application and provide a reasoned decision based on the merits of the case. The Court correctly emphasized the importance of a speaking order that addresses the Appellant’s arguments and evidence. By requiring the Controller to reconsider the application, the Court ensures a fair and just evaluation of the patent application based on its merits, rather than on procedural defaults. --- [[1]](#_ftnref1) Star Scientific Limited v. The Controller of Patents and Designs, (C.A.(COMM.IPD-PAT) 20/2024). [[2]](#_ftnref2) Ferid Allani v. Union of India & Others, 2008 SCC Online Del 1756. [[3]](#_ftnref3) Telefonaktiebolaget Lm Ericsson (Publ) v. Union of India & Others, 2010 SCC OnLine Del 1086. [[4]](#_ftnref4) Merck Serono S.A. v. Union of India & Others, 2014 SCC OnLine Del 1825. [[5]](#_ftnref5) FMC Corporation v. The Controller of Patents, CA(COMM. IPD-PAT) 482/2022. [[6]](#_ftnref6) Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents, 2022 SCC OnLine Del 4982. [[7]](#_ftnref7) Huhtamaki Oyj and Another v. Controller of Patents, 2023 SCC OnLine Del 3272. --- ## Office Locations - [New Delhi](https://ksandk.com/locations/top-corporate-law-firm-in-delhi/) (HQ): +91-11-41318190 | info@ksandk.com - [Mumbai](https://ksandk.com/locations/top-corporate-law-firm-in-mumbai/): 3 offices (Nariman Point, Lower Parel, Andheri) | mumbai@ksandk.com - [Bangalore](https://ksandk.com/locations/top-corporate-law-firm-in-bangalore/): bangalore@ksandk.com - [Chennai](https://ksandk.com/locations/chennai/): chennai@ksandk.com - [Hyderabad](https://ksandk.com/locations/hyderabad/): hyderabad@ksandk.com - [Pune](https://ksandk.com/locations/pune/): pune@ksandk.com - [Kochi](https://ksandk.com/locations/kochi/): kochi@ksandk.com ## Contact - [Contact Page](https://ksandk.com/contact-us/) - General: info@ksandk.com | +91-11-41318190 - WhatsApp: +91-7428567444 - [Privacy Statement](https://ksandk.com/privacy-statement/) - [Terms of Use](https://ksandk.com/terms-of-use/)