In two recent judgements, namely Man Truck Bus Se vs. Assistant Controller of Patents
Designs [C.A.(COMM.IPD-PAT) 16/2022] and Kao Corporation vs. The Controller of Patents & Anr. [C.A.(COMM.IPD-PAT) 1/2024, I.A. 128/2024], the Delhi High Court underscored the significance of adhering to the principles of natural justice while adjudicating patent applications.

Both cases shared a commonality where the objection forming the basis of the impugned
orders, that refused the patent grant to the Appellants, was not raised in the hearing notice.

In the case of Man Truck Bus Se, the Appellant challenged the Controller’s order asserting the following procedural irregularities:

·        The Respondent failed to appreciate the grant of corresponding applications in other jurisdictions, including the grants by the European and US Patent Offices, after considering similar prior arts as was considered by the Indian Patent Office.

·        The impugned order lacked reasoning for refusal as the Respondent merely duplicated the aspects of prior art from the First Examination Report (FER), without factoring in the response to the objections provided in the Appellant’s reply to FER.

·        The Respondent refused the application on grounds not mentioned in the hearing notice. A new objection relating to a new prior art document D5, that was not cited in the hearing notice, was raised at the time of hearing.

In Kao Corporation, the Appellant’s case was that:

·        The refusal was based on grounds not included in the hearing notice, specifically citing the objection under Section 3(a) objection.

·        The Respondent incorrectly held that the Appellant had not addressed the objection
on lack of industrial applicability even though the hearing notice acknowledged that the claims of the Appellant satisfied the industrial applicability requirement.

The Delhi High Court set aside the orders in both the cases and remanded the matters to the Patent Office. The Court emphasized the Controller’s duty to raise all the objections in the hearing notice.

While deciding Man Truck Bus Se, the Court pointed to the Controller’s failure to:

·        Conduct an additional and fresh analysis of the prior art based on the Appellant’s reply to first examination report.

·        Provide any analysis or discussion relating to the prior art, particularly on how the prior art’s teaching would make the subject invention obvious.

·        Include the prior art document D5 in the hearing notice despite basing the refusal on said document.

In Kao Corporation, the Court held that:

·        Hearing notices must include all objections to allow the Applicant to contest them adequately.

·        Refusal based on the industrial applicability objection, previously indicated as met, was erroneous.

In conclusion, the Delhi High Court’s rulings emphasize the importance of procedural fairness and adherence to the principles of natural justice in deciding patent eligibility. Top of Form