Telefonaktiebolaget L.M. Ericsson vs Controller General Of Patents

K.N. Basha, J

1 . This appeal is preferred by the appellant challenging the order passed by the Assistant Controller of Patents and Designs, New Delhi dated 29.01.2010 under Section 117A of the Patents Act, 1970

Mr. G.V. Deepak Srinivas, the learned counsel for the appellant is present today and no one is appearing for the respondents, in spite of serving notice even on the earlier occasion.

3 . The learned counsel for the appellant would contend that the appellant is having two grounds to challenge the impugned order viz., on the grounds of violation of the principles of natural justice as well as on the ground of merits in this matter. It is pointed out by the learned counsel for the appellant that the application is related to the year 2003, already 11 years time lapsed out of the validity period of patent for 20 years and as such the appellant is anxious to convince this Bench regarding the merits of the case.

Though the learned counsel would contend that he has to make his first contention, once we have satisfied that the impugned order was passed in gross violation of the principles of natural justice, we have to set aside and remand the matter for a fresh consideration and to consider the matter on merits would be a futile exercise.

5 . The learned counsel would also submit the written arguments highlighting the issues involved in this matter on merits and also the grounds of violation of the principles of natural justice.

The first and foremost contention in respect of violation of the principles of natural justice is that the respondents have not conveyed objections in detail to the appellant enabling the appellant to give their response effectively. It is pointed out by the learned counsel for the appellant that in the first examination report dated 26.05.2008 in the objection containing No. 1, reads hereunder:

"Claims 1-23 are objected to as being not patentable under Section 3(k) of the Patents Act, 1970 (as amended). Claims are not clearly worded."

In respect of the claims 1 to 23, the reading of the first objection as incorporated earlier merely reveals that claims 1 to 23 are not patentable under Section 3(k) of the Patents Act, 1970 as amended in 2005 (hereinafter referred to as the "Act". It is pointed out by the learned counsel for the appellant that Section 3(k) of the Act deals with four different categories viz., Mathematical Method or Business Method or a computer program per se or algorithms; but it is contended that in the first examination report as per objection No. 1 it is not indicated by the examiner that under which category out of four categories the patent claimed by the appellant is not patentable.

7 . The second contention of the learned counsel for the appellant is that the first examiner, who has raised objection as well as the author of the impugned order are one and the same and as such it is in violation of the established principle of no person would be a Judge for his own cause.

8 . Considering the above said submissions, we are of the view that there is much force in the said contention and as such we are not inclined to go into the merits of the case apart from considering the above said two contentions regarding the violation of the principles of natural justice.

9 . In respect of the first and foremost contentions, we have perused the first examination report dated 26.05.2008 and it is seen that as rightly pointed out by the learned counsel for the appellant, it is merely mentioned in respect of claims 1 to 23 are not patentable under Section 3(k) of the Act. It is relevant to refer Section 3(k) of the Patent Act, 1970, which reads hereunder:

"A mathematical or business method or a computer program per se or algorithms"

The reading of the above provision makes it crystal clear that the said provision contains four categories, which would disentitle the claim of invention namely No. 1, Mathematical method (2) Business Method (3) A computer Program Per Se (4) Algorithms. The first examination report as per his first objection is bereft of any details to attract the provision under Section 3(k) of the Act. It is crystal clear that the appellant was not conveyed the details of objection or the reason on which Section 3(k) of the Act is attracted in the instant case for any one of the above said categories. As a result, the appellant is deprived of their opportunity to put forward their claim or response to the objections raised by the first examination report.

The next contention is that the first examination report as well as the author of the impugned order are one and the same and the perusal of the first examination report and the impugned order substantiate the contention of the learned counsel for the appellant as it is very much evident that the person, who has passed the impugned order and the author of first examination report are one and the same. It is against the well established principle that no man can be a Judge for his own cause.

12 . Therefore the above said two grounds argued by the learned counsel for the appellant and discussed by us makes it abundantly clear that the impugned order was passed in blatant and flagrant violation of the principles of natural justice. It is to be reiterated that proper procedure is by affording a reasonable opportunity to put forward the claims of the appellant was not given in the instant case. As we have pointed out earlier that the objections of the first examination report are not specific and not stated as to how the instant case attracted Section 3(k) of the Act. Unless and until the appellant is given opportunity to put forward and explain their case effectively and explain their claim, it is not fair on our part to go into the merits of the case at this stage.

Accordingly, we are constrained to set aside the impugned order dated 29.01.2010 by the Assistant Controller of Patents and Designs, New Delhi. Consequently, the learned the Assistant Controller of Patents and Designs, New Delhi shall consider the matter afresh by affording a reasonable and effective opportunity to the appellant/applicant and dispose of the application of the appellant/applicant in accordance with law and on merits. It is made clear that the first examination report shall contain the specific objection or specific category attracting Section 3(k) of the Act by giving such specific objection an opportunity should be given to the applicant/appellant to give their reply by substantiating their claim for patent. It is further made clear that the first examination report shall be prepared by a different person than that of the Assistant Controller of Patents and Designs, New Delhi, who is going to pass the fresh order. The above said exercise shall be completed within a period of three months from the date of receipt of a copy of this order. No costs.