Siemens A.G.Vs Controller Of Patents And Designs

K.N. Basha, J

1 . This appeal is preferred by the appellant challenging the order of the Assistant Controller of Patents and Designs, Patent Office, New Delhi dated "NIL", rejecting the application of the appellant and refusing to grant of patent claimed by the appellant under Section 15 of the Patents Act, 1970 (as amended in 2005) (hereinafter referred to as the "Act").

Mr. M.P. Bhatnagar, an authorized agent of Patents, appeared before us and made his submissions.

3 . The learned agent mainly contended that the appellant preferred application for Patent by filing the same on 29.3.2006 and the date of request of examination on 8.5.2006 and the first examination report dated 16.6.20008 was furnished and response was given on 6.5.2009. It is further submitted that the Second Examination Report dated 9.6.2009 and response was given on the same date of 9.6.2009 itself, but it was wrongly typed in the synopsis of cases as "11.6.2009". Learned agent would submit that thereafter the date of hearing of the application was fixed on 28.8.2009.

It is pointed out by the learned agent that the second examination report is dated 9. 6.2009 and the said report was issued 7 days before the expiry of the last date wherein fresh objections were raised stating that the claim falls within the scope of 3(k) of the Act, as the method is being carried out by computer program only. It is pointed out by the learned agent that the above said fresh objection was not given in the First Examination Report. It is also stated in the written submission of the synopsis of cases that the response was given on 9.6.2009 stating that the invention as described and raised does not attract Section 3(k) of the Act. After the submission of response on 9.6.2009 as there was no response from Patent Office, New Delhi the appellant visited on 15.6.2009 and met the Examiner and the Controller, but the Controller refused to discuss the case further directed the appellant would hear from Patent Office in due course of time in spite of the agent insisted that the last date was expiring on 16.6.2009 and a major objection was raised at the last moment and that it was the practice that the application should be finalized on the last date within 12 months from the date of First Examination Report. It is stated that on 17.6.2009 the appellant received a communication without mentioning section and gist of objection through an e-mail followed by a letter informing the date of hearing was on 5.8.2009, in which the objection dated 9.6.2009 was referred in relation to para 1 viz, Section 3(k) of the Act. It is further submitted that another communication was received on 24.6.2009 that the hearing was preponed on 27.7.2009. The appellant made a request to the Controller of Patent to adjourn the hearing and the same was adjourned as per the communication dated 11.8.2009 informing that the hearing was scheduled on 28.8.2009 and the time allotted was between 11.00 a.m. and 12.00 noon.

It is the case of the appellant, as submitted by the learned agent that the learned agent appeared before the Controller of Patents and Designs on the date of hearing on, 28. 8.2009 and submitted two sets of amended claims and argued at length from 11.00 a.m. to 1.15 p.m. and the learned Controller was simply hearing and he was not putting any question during the course of argument. After completion of the arguments and submission of two sets of amended claims, the learned Controller simply stated order would be passed. The learned agent would further contend that as per the established procedure he has to make his written submission to the Registry of the Patent Office, New Delhi and he has also sent his representative to the Patent Office on the next date. In the mean time, he has received the impugned order copy through speed post on 29.8.2009 itself. It is vehemently contended by the learned agent that in the impugned order dated "NIL" there is no discussion about the two sets of amended claims made by the appellant and there is no discussion about the submission made by the agent to the effect that invention in the matter of the appellant would not attract the provisions of Section 3(k) of the Act. It is also pointed out by the learned agent that in the impugned order the Controller had not at all discussed about the two sets of amended claims either in respect of first set or in respect of the second set. It is the contention of the learned agent that without considering the contention of the appellant and without considering the claim submitted by the appellant, the learned Controller of Patents & Designs, New Delhi has mechanically and arbitrarily passed the impugned order without considering the written submission even on the next day. Therefore it is submitted that the impugned order was passed in gross violation of the principles of natural justice and therefore it is liable to be set aside.

6 . We have carefully considered the contentions put forward by the learned agent of the appellant and also perused the materials available on record and also the grounds of appeal and the documents annexed along with the appeal coupled with the impugned order passed by the Controller of Patents & Designs, New Delhi.

7 . At the out set we are constrained to state that the perusal of the impugned order makes it crystal clear that the application was heard on 28.8.2009 and the learned agent of the appellant received the impugned order copy on the very next day and it is seen even the date of the order was not mentioned by the Assistant Controller of Patents & Designs, New Delhi and it is seen that the impugned order was passed in a mechanical and arbitrary manner.

8 . We are able to see much force in the contention of the learned agent that on the date of hearing i.e., on 28.8.2009 he has furnished two sets of amended claims and the same is substantiated by the production of the certified copies of the first set before us. The learned agent sought for certified copy of the two sets but the certified copy was furnished by the office of the Deputy Controller of Patents & Designs, New Delhi only in respect of the first set of amended claims and they have not furnished second set of amended claims till date as per the submission of the learned agent. At the risk of repetition, it is to be reiterated that the perusal of the impugned order shows that the learned Assistant Controller of Patent & Designs, New Delhi not even refers the submission of the two sets of amended claims made by the agent on 28.8.2009. Apart from the above said serious infirmities, the learned Controller has not made a whisper about the contention put forward by the learned agent on 28.8.2009. It is seen that the learned Controller has not discussed about the objection and the response of the appellant dated 11.6.2009.

9 . Yet another contention of the learned agent is that the Assistant Controller of Patents & Designs has not afforded any reasonable time to submit the written submission to the Patent Office, New Delhi that they were ready to submit even on the very next day on 28.8.2009 itself, before that they have received the impugned order copy on 29.8.2009. It is stated before us that the Assistant Controller has given a total go-bye to the established procedure and convention and without giving an opportunity to the appellant to submit or to make a written submission within a reasonable time, it is seen that in a hurried manner, the learned Assistant Controller, Patents & Designs, New Delhi has passed the impugned order without application of mind and without considering the two sets of claims submitted before him on 28.8.2009 and the oral submission made by the learned agent on that date. In view of the above said factor, we have no hesitation to hold that the impugned order was passed in a flagrant violation of the principles of natural justice.

In view of the foregoing reasons, we are constrained to set aside the impugned order dated "Nil" passed by the Assistant Controller of Patent and Designs, Patent Office, New Delhi. Consequently, we direct the Assistant Controller of Patents & Designs, New Delhi to fix a fresh date of hearing by affording a reasonable opportunity to the appellant to put forth his case through his authorized agent and also direct the Assistant Controller of Patents & Designs, New Delhi to consider the two sets of amended claims submitted by the appellant and also the written submission submitted by the appellant to the Patent Office, New Delhi. It is made clear that the above said exercise shall be completed within a period of six months from the date of receipt of a copy of an order. No costs.