In our last post, we discussed the decision in the case of Fresenius Medical Care Deutschland GmbH vs Controller General of Patents[C.A.(COMM.IPD-PAT) 302/2022] where the Delhi High Court allowed and took on record the amended claims, upholding the principle that in an appeal against a refusal order, the High Court possesses the same powers as the Controller under Section 15 of the Patents Act, including the power to require amendment. This decision reinforced the view that the High Court, while hearing an appeal, can itself assess and permit amendments if they meet the requirements of Section 59 of the Patents Act, 1970.

However, the Delhi High Court, in its decision in the case of Blackberry Limited vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 125/2022], has taken a different approach.

In this case, the Court heard the appeal against the refusal of Appellant’s patent application number 1071/DEL/2007, entitled “Method and System for Signaling Release Cause Indication in a UMTS Network”. The application was refused by the Controller on the grounds of Sections 2(1)(j), 3(k), 3(m) and 8, after the amended claims were disallowed for contravening Section 59 of the Patents Act, 1970.

The Appellant argued that the proposed amendment was within the scope of Section 59 and was wrongly disallowed by the Controller.

The Court noted that the impugned order lacked discussion or reasoning on how the amended claims fell outside the purview of Section 59. This non-speaking order was seen as a violation of the principles of natural justice.

Rather than directly exercising its powers to allow the amendments, the Court remanded the matter to the Patent Office, directing the Controller to examine the application afresh and issue a speaking order analyzing the amendments submitted by the Appellant.