By Jigyasa Pareek

The answer is not entirely straightforward.

The examination framework under the Patents Act contemplates that the Examiner conducts examination under Sections 12 and 13, following which the Controller communicates the objections to the applicant through the First Examination Report (FER). Hearing notices are primarily issued under Section 14 after the Controller remains unsatisfied with the applicant’s response to the FER.

However, in practice, it is not uncommon for Controllers to introduce fresh prior art references or new grounds during the hearing stage. There is, however, no express provision in the Act or the Rules that either prohibits or expressly authorises the Controller to cite additional grounds after issuance of the FER. Neither the Act nor the Rules prescribe a Second Examination Report (SER).

The controversy arises when such newly introduced objections become the basis of refusal without a fair opportunity for the applicant to respond or without proper consideration of the response that is filed. It is against this backdrop that the Delhi High Court’s decision in Jesal Vimal Jetha vs The Controller [C.A.(COMM.IPD-PAT) 233/2022] assumes significance.

The Delhi High Court set aside the Controller’s order refusing patent application number 20181101422, entitled “A Comforter System Having an Application in Conjunction with a Supporter”, after finding that the Patent Office had introduced additional prior art documents through the hearing notice and subsequently failed to consider the applicant’s detailed response to those documents.

It was the Appellant’s case that while the FER had relied only upon prior art documents D1 and D2, the first hearing notice introduced three additional prior art documents D3-D5. The Appellant filed a detailed technical response to the hearing notice addressing the newly cited documents which was allegedly disregarded while passing the impugned order. The Appellant further pointed out that after the written submissions were filed in response to the first hearing notice, a second hearing notice was issued. This course of action, according to the Appellant, was contrary to the scheme underlying Section 13(3) of the Patents Act, and the Controller ought to have directed the Patent Office to generate a SER instead. The Appellant also contended that the impugned order expressly recorded that the decision had been rendered on the basis of the reply filed in response to the second hearing notice, thereby indicating that the earlier response had not been considered.

The Controller disputed this contention and argued that Section 13(3) does not envisage issuance of a SER and that the applicant had already been afforded sufficient opportunity through hearing notices and oral hearings to address the objections.

Notably, Section 13(3) states that “where a complete specification is amended under the provisions of this Act before the grant of a patent, the amended specification shall be examined and investigated in like manner as the original specification”.

While agreeing that there is no provision in the Act or the Rules expressly providing for a SER, the Court nevertheless observed that patent examination is a quasi-judicial process and procedural fairness may, in appropriate cases, require the issuance of a SER where new objections or prior art references are introduced. According to the Court, such a course is in consonance and conformity with the spirit of Section 13(3), as it would ensure that all objections are communicated in a composite manner before the applicant can respond to those objections.

The Court observed that in the instant case:

• The first hearing notice broadened the scope of examination by introducing additional documents, which had not formed part of the FER, to impugn the inventive step of the subject application.
• The applicant’s detailed response to the first hearing notice assumed pivotal significance, as it constituted the principal rebuttal to the newly introduced prior art documents.
• The applicant’s response to the second hearing notice was confined to the objection arising from additional document D3, since the second hearing notice itself was restricted in scope.
• The impugned order merely took note of the existence of the response to the first hearing notice without engaging with its contents, while expressly recording that the decision had been rendered on the basis of the reply filed in response to the second hearing notice.
• The failure to consider the detailed technical submissions addressing D3-D5 amounted to a violation of the principles of natural justice.
• The FER identified D1 as the closest prior art, whereas the impugned order treated D3 as the closest prior art.
• The Controller incorrectly interpreted certain disclosures of document D3 while assessing inventive step.

In view of these deficiencies, the Court set aside the impugned order and remanded the matter to the Controller for fresh consideration.