In the case of M/s. Haldor Topsoe A/S vs Controller of Patents & Designs (Writ Petition No. 2943 of 2022), the Madras High Court permitted the revival of the patent application number 297/CHE/2012 which was deemed abandoned under Section 21 of the Patents Act, 1970. The Court quashed the impugned order and remanded the matter to the Patent Office for fresh consideration, emphasizing adherence to the principles of natural justice and due process.

Section 21 provides that a patent application shall be deemed abandoned if the applicant fails to comply with all requirements imposed under the Act within the prescribed period, starting from the date the first statement of objections or related documents is communicated by the Controller.

Notably, orders passed under Section 21 are not appealable under Section 117A of the Patents Act, leaving writ petition as the only remedy available to the applicant to challenge such decisions. Orders of refusal passed under Section 15, which are based on a substantive evaluation of the application such as lack of novelty, lack of inventive step, non-patentability etc., are appealable under Section 117A.

In the instant case, the impugned order stated that a Second Examination Report (SER) cum hearing notice was issued to the Petitioner, and that the failure to respond to the objections raised therein led to the application being deemed abandoned. However, the Petitioner denied ever receiving the SER and contended that only a hearing notice was served to them.

The Petitioner asserted that a detailed reply to the First Examination Report (FER) was duly filed within the prescribed timeline and that no further objections or SER were communicated thereafter. As such, the Petitioner contended that the impugned order was passed in violation of the principles of natural justice.  

In response, the Controller argued that the petition was not maintainable. It was asserted that, despite the reference to Section 21 in the operative portion of the impugned order, the order was, in fact, a refusal order passed under Section 15. It was argued that the decision was based on a substantive evaluation of the merits of the application, including an assessment of the cited prior art documents and the Petitioner’s response to the FER. Accordingly, since the Controller asserted that the application was refused on merit, it was argued that the appropriate course of action for the Petitioner would have been to file an appeal under Section 117A, rather than seek recourse through a writ petition.

The Court rejected the Controller’s contention that the impugned order was passed under Section 15, noting that the order made express reference only to Section 21 and, accordingly, held that the writ petition was maintainable.

The Court further noted that although the impugned order discussed certain aspects of the subject application and the cited prior art documents, the Controller failed to fully consider the Petitioner’s response to the FER. Emphasizing the importance of procedural fairness, the Court remarked that “the Petitioner, who is claiming an invention, should not be left high and dry and the benefit of doubt should also be given to a person, who is claiming an invention with regard to the grounds that have been raised by them in this writ petition”.

The Court recorded that the impugned order was unsustainable since the Petitioner had already filed a response to the FER and no SER was issued thereafter. The Court particularly remarked that “it is surprising as to how the hearing notice issued to the petitioner was treated as a second examination report by the respondent”.

The Court opined that the Petitioner ought to have been granted a fair opportunity to address all outstanding objections. Such an opportunity, it clarified, could only have been afforded if a proper second examination had been conducted and an SER was communicated to the Petitioner.

In light of the above findings, the Court quashed the impugned order and remitted the matter to the Patent Office for a fresh consideration.