Schering Corporation, Patent Department vs Asst. Controller Of Patents & Designs Government Of India

K.N. Basha, J

1 . This appeal is preferred by the appellant challenging the order dated 18.06.2009 passed by the learned Assistant Controller of Patents & Designs, Chennai rejecting the application filed by the appellant for seeking the relief of granting Patent right. Learned counsel for the appellant would submit that the impugned order was passed rejecting the claim of the appellant on two grounds namely 1. that the appellant failed to provide data regarding therapeutic efficacy of claim Crystalline form (Form-1) of Compound (2) and no. 2. the claims also lack inventive step under Section 2(i)(j)(a) of the Patents (Amendment act) 2005.

2 . The learned counsel would contend that there is no data in respect of therapeutic efficacy of claim Crystalline Form (1) of Compound (2). It is also contended that the second ground is also untenable as the learned Controller failed to consider the entire documents establishing the claim of the appellant. The learned counsel would submit that the impugned order is not a speaking order and all the claims and contents raised by the appellants are not properly considered by the Controller.

3 . Heard Mr. Liakatali learned senior Central Government Standing Counsel for the respondent on the submissions made by the learned counsel for the appellant. It is contended that the learned Controller assigned reasons for passing the impugned order and as such there is no illegality.

4 . We have carefully considered the rival contentions put forward by either side and perused the impugned order.

At the outset, it is to be stated that the perusal of the impugned order discloses that the Controller passed a cryptic and a non speaking order. The fact remains that the claims raised by the appellant were not properly considered by discussing the said claim and rendering finding on each and every aspect. It is pertinent to note that Section 15 of the Patents Act, 1970 gives options to the Controller namely either to afford opportunity to the applicant to make amendment in the application or to refuse the application on failure to submit any amendments.

Section 15 reads hereunder:

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.

The reading of the above said provisions makes it abundantly clear that the learned Controller ought not to have mechanically refused the application and on the other hand he could have exercised discretion to give opportunity to the applicant/appellant by making amendments in the application. As submitted by the learned counsel for the appellant to the effect that there is no data to be provided, the appellant could have given opportunity to make his submission by clearly stating that there is no question of providing any data and on the other hand, he could have given the opportunity to substantiate his claim on the basis of the documents produced by the applicant. We are also constrained to state even second ground namely claims also lack inventive step, the Controller has given a very bald and vague reason without going into the details of the entire document. In view of the aforesaid reasons, we are constrained to set aside the impugned order dated 18.06.2009 passed by the Assistant Controller of patents & Designs in application No. 2491/CHENP/2006. Consequently, the Asst. Controller of Patents & Designs shall consider the matter afresh by affording sufficient reasonable opportunity to the applicant/appellant to substantiate their claims. It is made clear that the Asst. Controller of Patents & Designs shall dispose of the matter within the period of three months from the date of receipt of the amended claims made by the applicant.