According to Justice Sanjeev Narula, the controller should have provided reasons to support the conclusion in order to follow natural justice principles.
The Assistant Controller of Patents and Designs was recently hauled up by the Delhi High Court for rejecting a patent application filed by BlackBerry Limited without reasoning through a “mechanical, template, and cut-and-paste order.” [Assistant Controller of Patents and Designs vs. BlackBerry Limited]
According to Justice Sanjeev Narula, the controller should have provided reasons to support the conclusion in order to follow natural justice principles. The Court emphasised that identifying the grounds for appeal may be difficult for the applicant if the Assistant Controller’s orders lack proper reasoning.
“The Controller ought to have disclosed reasons to support his conclusion. Reasoning through a speaking order is a vital aspect of the principles of natural justice and is of utmost importance, which needs to be underscored. If the patent office’s orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. The legal proposition that an order of such kind should be supported by reasons, needs no reiteration,” the Court observed.
BlackBerry submitted a patent application in 2008 for an invention that makes it easier to select small text on touch-screen devices by magnifying the text. In 2020, the Assistant Controller denied the application under section 15 of the Patents Act. Therefore, BlackBerry filed an appeal with the Delhi High Court.
The High Court noted that in one of the paragraphs of the Assistant Controller’s order, the reasons for rejecting the application were merely a word-for-word replication of BlackBerry’s claims, and thus there was no discernible reasoning in the paragraph. The Court found in the following paragraph of the challenged order that it was stated that the requirement of section 3(k) of the Patents Act was not met.
The Court stated that it could not fathom how this conclusion was reached. The court noted that the order includes details about the invention, its claims, and the proceedings, but the crux of the matter was the Assistant Controller’s failure to provide sufficient reasoning to support the final decision.
The Court emphasised that in a recent decision of the Delhi High Court in Dolby International AB v. The Assistant Controller of Patents and Designs, Justice C Hari Shankar was unable to identify the reasoning in the challenged order and had stated that the grant and rejection of a patent is a serious matter. The Court stated that these words must reverberate with the Patent Controller’s employees and that they must exercise due application of mind when making decisions.
Holding that the challenged order failed to meet the fundamental requirements of any order determining the patentability of an invention, the Court determined it was unable to examine it on its merits and, as a result, quashed the order and remanded the matter to the Assistant General for reconsideration before another officer.
