Warner-Lambert Company vs Controller General Of Patents & Designs

K.N. Basha, J

This appeal is preferred challenging the order of the learned Assistant Controller of Patents, New Delhi rejecting the patent application preferred by the appellant under section 15 of the Patents Act, 1970

2 . It is seen that this Bench had earlier heard the matter in length and orders have been reserved but however posted today for reopening the matter for further clarification. It is seen that the applicant originally made 8 claims and subsequently filed amended claims to 34 and thus in the subsequent amendment petition the claims confining to 34.

3 . Ms Ranjna Mehta Dutt, the learned counsel appearing for the applicant would submit that there is absolutely no communication what so ever from the Registry of the Assistant Controller of Patents that whether the amendment application is allowed or not. However, without any adjudication on the claims, the learned Assistant Controller of Patents has rendered his findings in respect of all the claims and as a result the applicant has been deprived of their opportunity to put forth their contentions regarding claims relied by them. The learned counsel would also submit that in view of such findings rendered in the impugned order without any adjudication and without any arguments resulted in grave miscarriage of justice.

4 . We have carefully considered the contentions put forward by the learned counsel for the appellant and perused the impugned order apart from perusing the entire materials available on records.

5 . The fact remains that perusal of the impugned order reveals that there is no mention of filing any amendment petition at all. It is the specific stand of the appellant that they have filed an amendment petition seeking for the relief of raising their claims numbering 34 instead of initial claims numbering 8. It is the grievance of the appellant that they have not been informed by Registry of the Patent Office regarding the fate of their amendment application raising their claims to 34. We are able to see the genuine grievance of the appellant in respect of their amendment application. It is very unfortunate to note that the amendment application filed by the appellant has not at all considered by affording opportunity to the appellant to the effect whether the claims 34 have been allowed or not allowed. Therefore, we have no hesitation to hold that without affording opportunity to the appellant to put forward their contentions relating to 34 claims would certainly amount to the effect that the impugned order was passed in flagrant violation of principles of natural justice.

6 . The yet another contention of the learned counsel for the appellant is that during the First Examination Report as well as Second Examination Report, there is no whisper about the earlier prior art namely Example 10 of US 5273995 or in the hearing notice which factor was also admitted by the Assistant Controller and as such rendering a finding notice on the above said aspect by the Assistant Controller of Patents is also in violation of the principles of natural justice. It is well settled by a catena of decisions by this Bench and as well as by the Hon'ble High Courts that all objections are to be conveyed to the applicants enabling them to meet the same. It is pertinent to note that even in the impugned order, the Assistant Controller of Patents has observed hereunder:--

"It is clear from the FER that the ld. Examiner has not elaborated that why the claimed invention under question does not posses inventive step in the light of citations."

7 . Therefore it is crystal clear that the Assistant Controller is well aware about the above said factors but in spite of the same rendered his findings against the appellant in flagrant violation of principles of natural justice.

8 . In view of the above said reasons, we are constrained to allow this appeal. Accordingly, the impugned order dated 21/05/2010 passed by the Assistant Controller made in the patent application No. 1576/DEL/1996 is hereby set aside. The Assistant Controller of Patents and Designs, New Delhi shall reconsider the matter afresh by affording reasonable opportunity to the appellant. The Assistant Controller shall also furnish all the objections raised by the Examiner in the First as well as Second Examination Report or any subsequent objections to the appellant enabling them to rebut the said objections and after hearing the arguments the Assistant Controller shall pass orders on merits and in accordance with the Law. It is made clear that the above said exercise shall be completed by the Assistant Controller of Patents within a period of three months from the date of receipt of this order.