Thomson Reuters Global Resources vs Controller General Of Patents, Designs & Trade Marks, The Assistant Controller Of Patents And Designs And The Examiner Of Patents And Designs

Prabha Sridevan, J

The invention of the appellant is titled ""Systems, Methods, Interfaces and Software for Extending Search Results beyond initial query-defined

boundaries"". The respondent refused to grant patent on the ground that it lack of novelty and inventive step and that it is not allowable as per Section 3

(k) of the Act, as it is a computer programme. The appellant is aggrieved by the decision.

The learned counsel Shri Samaresh Chakraborty appearing for the appellant, submitted that the original claim 1 to 8 had been replaced by revised

claims 1 to 30. The original claims are contained in pages 182 and 183 of the paper book. The revised claims are from page 184 and 189. The

applicant was originally Thomson Global Resources and by a special resolution and approval of the Registrar of Companies, the name had changed to

the present name and this has been officially indicated to the respondent. The First Examination Report id dated 15.09.2008 and objection 1 is ""subject

matter of claims does not constituted an invention as lacks of inventive step and obvious in view of opinion of International Search Authority"".

Objection 2 is that ""the inventive feature of the alleged invention should be incorporated into claim 1"". Objection 6 stated that ""the method claim falls

within the scope of Section 3(k)"". To this, the respondent sent the letter dated 28.8.2009 and requested the respondent to reconsider the application.

The appellant had filed the Form-13 whereupon the claims had been revised. To the same letter, the respondent replied that ""the official requirement

raised in a FER have not been met"" and therefore the appellant was asked to be present for the hearing on 5.12.2009. The attorney of the appellant

sent a letter on 1.12.2009 asking that there should be a clarity regarding the objection and merely stating official requirement raised in a FER have not

been met will not help the appellant to rectify the defects, if any. Then a letter was sent by the Respondent on 3.12.2009, which stated that the official

requirement raised in a FER have been met and that the appellant should come for the hearing. The appellant respondent by the letter dated 8.12.2009

requiring clarification why the appellant should meet the respondent if all the requirements had met. The respondent replied on 16.12.2009 stating that

what should have been written on 3.12.2009 was actually the words ""have not been met"" and that it was a clerical error. They again fixed the hearing

on 24.12.2009, this was followed by a letter from the Deputy Controller reiterating the same position. On 29.12.2009, again the attorney of the

appellant wrote to the respondent's office that when no reason has been assigned to negate the written submission and ""none of the revised claims

have been particularized"", why were they not allowable and for what reason. To this there was again a reply on 6.12.2010, stating the official

requirement raised in a FER have not been met. The appellant wrote a letter on 8.1.2010, informing the respondent that they would attend the hearing.

Then since instructions from the client were not received they requested an adjournment, which was granted. The hearing was thereafter held on

25.01.2010. It was attended by the appellant's counsel who also submitted the written note of arguments. In this, it was specifically stated that the

objection in the FER was based on a single document D1 in the ISA which was against the original claim but when the claims have been revised,

there has been no communication negating the written submissions of the appellant.

An order was passed in which the respondent after extracting the claims and the statutory provisions rejecting the grant of patent. In this impugned

order, we find that the objections raised in the FER which are relevant and affecting the decision are reproduced and objection A refers to not only D1

which was in the ISA, which is US 2003-097357 but also D2, which is WO 00/77690. It incidentally also had that the apparatus claims, lacks in

inventive constructional features and method claims are unnecessary. The order also stated that D2 nullifies the novelty and inventive step of the

claimed invention.

The learned counsel for the appellant submitted that unless the appellant knew what was exactly the objection, it would not be possible for the

appellant to rectify the defect in the application. The learned counsel submitted that the appellant was kept in the dark, inspite of repeated request for

clarification regarding the objection. The learned counsel also pointed out that there was an obvious error in the order since it stated that the subject

matter of the above original method claims 4-8 or revised method claims 1-14 and original system claims 1-3 or revised apparatus claims 16-30 either

alone or in combination with the defendant claim do not constitute an invention.

The learned counsel submitted that once the claims had been revised all that the Controller had to do was to examine the patentability, on the basis

of the revised claims. The learned counsel submitted that citing D2 as a prior art without putting the appellant on notice about that was not fair. The

learned counsel referred to the written opinion of the International Search Authority, where D1 alone was referred to and it was stated that the

application does not involve in an inventive step.

The International Search Report had been produced, where D2 is a document considered to be relevant. However, in the ISR written opinion, D1

alone finds a mention.

The learned counsel also referred to IPAB dated 13.9.2011, order No. 159/2011 - Touchsensor Technologies, LLC vs. The Controller of Patents

and Designs, Kolkata and others, where it is stated that the appellant must necessarily know on what ground the application for patent was rejected

and if objections are not communicated, then it means that fair opportunity was not given to the appellant. According to the learned counsel, after the

above order dated 13.9.2011, circular No. 4/2011 was issued by the Controller General where the importance of examiners discharging their duties

with due diligence was stressed and as per this circular, the examiners had to report the relevant paragraphs of prior art which adversely affected the

patentability of the claim and frivolous objection were disapproved. As regards the Controller, this circular stated that the Controller may have

objection over and above those that the examiner had raised, but he may also over rule any objection, but the Controller shall justify such

addition/deletion in the note schedule. It is also indicated that if there are objections outstanding or further objections are raised such objections shall be

communicated along with the notice of hearing giving a reasonable time to the applicant. According to the learned senior counsel, these guidelines are

also not been followed. Thereafter he prayed that the appeal be allow.

Shri. Soumen Das, Assistant Controller represented the respondent and submitted no patent can be granted for the invention, since it is a software.

What we are concerned with in this case is fairness in procedure. The conclusion may even be right, but if procedurally there is unfairness, we

have to send the matter back for re-hearing. Bald statement's that ""official requirement raised in a FER have not been met"" is neither clear nor fair. It

does not indicate what are the objections. Inspite of several requests by the appellant to clearly state what are the objections, the respondent only

repeated the same sentence. Several objections had been raised in the FER. Undoubtedly, some of the objections would have been rectified. If so, the

above mentioned comment can only be with regard to the surviving objections. In this case, the original claims have been revised. If even after that

the same objection is raised, the doubt arises in our minds whether the examiner had applied his mind at all. The circular mentioned above clearly says

that the objections on novelty/inventive step can be raised with reasons only and that raising objections without justifying them violate the principle of

natural justice. In this case absolutely no reasons are given why the examiner says that the objections are not been met. It is possible that the

examiner justifiably felt that the objections have not been met, if so, he should clearly state why and how the objections still remain. Then a letter has

been sent stating ""that the objections have been met"". After the appellant had asked why he should meet the examiner if the objections have been met.

There is a reply to this that statement was a typographical error. The jurisdiction of the patent office is of great importance, we hope that each officer

is conscious of the same. The manner in which this case has proceeded raises serious doubts.

When the appellant has been repeatedly asking, what are the objections of the examiner, the examiner could have stated that he is relying on the

D2 document. But there are blank, reasonless letters. And in the impugned order there is a reference to D2. We are not saying that D2 is not a valid

prior art, it may very well be a prior art that destroys novelty. But the appellant is entitled to know what the objections are clearly, so that he can

defend his patent against the objections and thereafter, it is up to the Controller to pass appropriate orders. This is procedural fairness. The appellant

must have a fair opportunity to defend his case, and for this he must know what exactly are the objections.

Before us, Shri Soumen Das, Assistant Controller said that it was a software, therefore patent cannot be granted. We again repeat that the

appellant should know what are the objections and then any order that is according to law may be passed.

The learned counsel for the appellant is also right in his objections to the examiner referring to the original claims. It is open to the examiner to see

whether the revised claims are acceptable but once the amended claims have come into the picture, then the Controller need not test the patent

against the original claims.

In the result, we are firmly of the opinion that the matter should be sent back to the Controller for the examination in accordance with law. When

notice of hearing is sent, the appellant should clearly know what are the objections that will be raised against the invention. The appellant should also

know the prior arts that the Controller will be relying on during the hearing. After intimating to the appellant, these details, a date of hearing may be

given and the matter shall be decided in accordance with law. We are making it clear that we have not examined the merits of the patent at all. We

have only seen the procedural flaws. Therefore the Controller at is liberty to arrive at his decision according to law. It may be better to send this

matter to a different officer who will approach the case with an open mind.

The grounds of appeal must be properly worded. The officer is a quasi judicial authority, the error may be an error in law but to call it ""ulterior

motive and wrongful intention of the Assistant Controller"" does not appear to be civil drafting of grounds. Greater care and restraint must be exercised

by the counsel while drafting the grounds of appeal. It is well settled that the said officer has to act in a quasi judicial manner and it is well settled that

when an authority, acting in a quasi judicial manner, passes an order which affects the right of the parties such order should be reasoned order. The

appeal is allowed and the matter is remanded for rehearing as indicated. The matter shall be heard and decided within one month from the date of

receipt of this order.