In Bayer Cropscience Aktiengesellschaft vs The Deputy Controller of Patents and Designs & Anr. [C.A.(COMM.IPD-PAT) 80/2024], the Delhi High Court reiterated the judiciary’s intolerance for non-speaking and copy-paste orders in patent prosecution. The Court set aside the Post-Grant Opposition (PGO) order that revoked Bayer’s patent IN 369450, holding that the Controller failed to independently evaluate the Patentee’s submissions and had merely reproduced the Opponent’s submissions and the Opposition Board’s recommendations (OBR). The judgment reinforces the duty of Controllers to apply independent reasoning.

The subject patent, entitled “Method for the Preparation of Substituted 2-Aryl-Ethanols”, concerns a process for preparing 2-(4-chloro-2,6-dimethylphenyl) ethanol by reacting a Grignard compound with ethylene oxide in the presence of specific copper catalysts.

The revocation was based on the grounds of lack of inventive step, non-patentability under Section 3(d) and insufficiency of disclosure.

Bayer challenged the impugned order on the following grounds:

• Violation of Natural Justice: Bayer argued that the Controller could not have reasonably considered the written submissions as the impugned order was passed just a day after the submissions were filed. In support of this contention, Bayer relied on a table comparing the impugned order with Bayer’s written submissions, the Opponent’s written submissions, reply statements of both parties and the OBR to submit that none of the submissions made by Bayer in the written statement was considered by the Controller before passing the impugned order.
• Non-speaking, cut-paste order: The revocation order lifted large portions verbatim from the Opponent’s submissions and the OBR.
• Errors on Merits: Bayer argued that none of the cited prior art documents taught the process claimed under the subject patent. They further argued that Section 3(d) was wrongly invoked and the Controller failed to consider Bayer’s submissions regarding sufficiency of disclosure.

The Court concurred with the arguments advanced by the Appellant, observing the following:  

• Non-Consideration of Patentee’s Submissions: The Court found that the Opponent’s written submission and PGO was considered by the Controller in multiple paragraphs of the impugned order, however, not even a single reference to Bayer’s written submissions and reply statement was made. Although both the written submission of the Patentee and the Opponent were submitted on the same day. The Court also noted that multiple paragraphs of the impugned order were mere reproduction of the Opponent’s submissions.
• Mechanical Reliance on the Opposition Board: Relying on Willowood Chemicals vs Assistant Controller of Patents and Cipla Ltd vs UOI, the Court held that although OBRs carry considerable relevance, the Controller must apply independent reasoning and may diverge where warranted.
• Non-Speaking Order: Relying on Qualcomm Inc. vs Controller of Patents, the Court emphasized that an order that does not deal with submissions advanced suffers from manifest non-application of mind and is unreasoned. The Court noted that the impugned order included only two paragraphs of ‘reasoning’, both formulaic and conclusory.

In light of the foregoing discussion, the Court set aside the impugned order and remanded the matter to the Patent Office for reconsidered.