In a recent judgment (Star Scientific Limited v Controller of Patents and Designs, C.A.(COMM.IPD-PAT)20/2024, 30th July 2024, 2024:DHC:5643) the Delhi High Court held that the Controller of Patents cannot pass an unreasoned order merely because the Appellant was absent during the hearing.

Indian patent application number 202017011947 was refused by the Controller vide order dated 18th December 2023 on the ground that all the objections in the hearing notice remained unmet as the Appellant failed to appear for the hearing appointed in the matter. The Appellant’s Agent in this case who had indeed not attended the hearing, had informed the Controller regarding their failure to attend the hearing due to financial difficulties being faced by the Appellant and had requested for due disposal of the application according to the statutorily prescribed procedure. The Controller thereafter proceeded to refuse the application citing failure of the agent to attend the hearing and outstanding objections as reasons for refusing to proceed with the application.

The Court noted that the order of the Controller was devoid of any analysis of the objections to the grant of the patent despite the detailed reply to the first examination report filed by the Appellant. The Court also disagreed with the Controller’s contention that the Appellant had taken the conscious decision to abandon their patent application particularly when the Appellant had actually filed a detailed reply to the first examination report. The Court held that this was not a case where it could be said that there was a conscious act on the part of the Appellant which would manifest the intention to abandon the application since the Appellant had requested for a disposal of the application according to statutory provisions despite not attending the hearing. Therefore, even if the Appellant had not attended the hearing the Controller was duty-bound to pass a reasoned order taking into account the submissions of the Appellant in their reply to the first examination report.

The Court also noted that the Controller had failed to take into consideration the grant of corresponding patents by various other jurisdictions which is an important factor that reflects on the patentability of the invention claimed.

Thus, the Court set aside the order of the Controller refusing the application, directed the Appellant to file their written submissions in relation to the objections raised in the hearing notice and directed the Controller to thereafter decide the matter afresh through a reasoned order.