This analytical legal article delves into the fate of an order passed by the
Controller of Patents, which was challenged in the High Court of Delhi through
an appeal filed under Section 117A of the Patents Act, 1970. The appeal sought
to challenge the rejection of a patent application filed by the appellant for an
invention titled "Minimizing feedback by sending a quality indicator for a
nonrestrictive reuse set and a vectored quality indicator for other reuse sets."
The crux of the appeal lies in the Controller's failure to address the
submissions made by the appellant during the patent examination process.
The patent application in question (no. 5159/DELNP/2007) was filed on 4 July
2007. Subsequently, the Patent Office raised objections to the application,
prompting the appellant to submit responses to these objections on 19 December
2012. A hearing was granted to the appellant on 3 December 2014. However,
despite the appellant's submissions and the hearing, the Deputy Controller of
Patents and Designs passed an order on 31 October 2016 rejecting the patent
The pivotal issue raised in the appeal before the High Court of Delhi was the
lack of proper reasoning in the Controller's order. The order acknowledged the
receipt of responses from the appellant but failed to address the contents of
these submissions. Notably, there was no indication that the Controller examined
the merits of the appellant's responses or engaged with the arguments put forth.
Furthermore, the order revealed that the Deputy Controller concurred with the
findings of the Examiner, yet no reasons were provided for this agreement.
Additionally, the order did not make any observations or findings regarding the
appellant's response to the Examiner's objections. This deficiency led to a
manifest non-application of mind on the part of the Controller and rendered the
order ex facie unreasoned.
High Court's Ruling
Upon hearing the appeal, the Hon'ble High Court of Delhi took a critical stance
on the Controller's order. The court observed that an order that fails to
address the submissions made by the party challenging the decision suffers from
a fundamental flaw manifest non-application of mind. In other words, when an
authority adjudicating a matter overlooks or ignores crucial submissions by a
party, it indicates that the decision-making process was flawed.
The court went on to emphasize that such an inadequately reasoned order cannot
stand either in law or on facts. It not only violates the principles of natural
justice, which dictate that parties be given a fair opportunity to be heard and
that their submissions be duly considered, but also undermines the efficacy of
the patent system.
Patent examination and grant procedures necessitate meticulous scrutiny of the
application and the arguments presented, and the absence of proper reasoning can
lead to arbitrary and unjust decisions.
In conclusion, the fate of an order passed by the Controller of Patents, when it
fails to address the submissions made by the appellant, is likely to be set
aside and remanded for de novo adjudication.
The case at hand exemplifies the importance of reasoned decision-making and the
application of mind by the patent authorities. The High Court of Delhi's ruling
sends a strong message that orders lacking proper reasoning and
non-consideration of submissions will not be tolerated.
The judgment highlights the significance of transparency, accountability, and
adherence to principles of natural justice in the patent examination process.
Patent applicants are entitled to fair treatment and a thorough assessment of
Consequently authorities responsible for adjudicating patent matters must ensure
that their orders are reasoned, well-grounded, and take into account all
relevant submissions before rendering a decision. Failure to do so can result in
the invalidation of the order and the need for reevaluation.
The Case Law Discussed:
Name of Hon'ble Judge: Qualcomm Incorporated Vs Controller of Patent
Date of Judgement:24.07.2023
Case No.CA Comm IPD PAT 285 of 2023
Name of Hon'ble Court:High Court of Delhi
Information contained herein is being shared in the public Interest. The same
should not be treated as substitute for legal advice as it is subject to my
subjectivity and may contain human errors in perception, interpretation and
presentation of the facts and law involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539