K.N. Basha, J
1 . The challenge in this appeal is to the order dated 22/5/2012 passed by the Assistant Controller of Patents and Designs, Kolkata in respect of Indian
Patent Application No. 1818/KOLNP/2006, rejecting the application filed by the appellant herein.
2 . The appellant raised various grounds on merits as well as in respect of the procedure adopted by the Assistant Controller of Patents and Designs
by considering the claims and rendering findings ultimately rejecting the claims made by the appellant herein.
3 . Mr. Nitin Masilamani, the learned counsel representing Amarchand & Mangaldas & Suresh A Shroff & CO. for the appellant put forward
elaborate contentions both on merits and on procedural lapses on the part of the Assistant Controller of Patents and Designs in passing the impugned
order. However, the learned counsel for the appellant confined his contentions mainly on the procedural lapse and non-consideration of dependent
claims along with the main claims made under claim-1 and claim-13 and contented that the impugned order is liable to be set aside and the matter may
be remanded for fresh consideration.
4. The learned counsel would point out the following procedural lapses.
(1) That the objections originally raised in the first examination report dated 11/09/2009 were not raised thereafter in the subsequent office action or
during the date of hearing in respect of the lack of novelty and inventive steps which deprived the appellant to put forward their contentions and
explanations for those objections. It is contented that the findings rendered on those aspects without affording opportunity to the appellant would
amount to violation of principles of natural justice.
(2) In the impugned order itself, the Assistant Controller pointed out the objections numbering 4 in respect of the claims made by the appellant stating
that the claims are not supported by the descriptions, revised claims 1-12 fall under section 3(d) and section 3(e) of the Patents Act and claim 13 and
its dependent claims do not sufficiently define the invention. But the Assistant Controller has framed the issues to be considered for taking the
decisions contrary to the objections pointed out by him in the very same impugned order.
(3) The Assistant Controller having given a finding after discussion and consideration in respect of the claim-1 has failed to consider and discuss and
thereafter to render findings in respect of claims 2 to 21.
5 . By pointing out the above said lapses and the non-application of mind by the Assistant Controller (Patents & Designs), the learned counsel would
vehemently contend that the impugned order is liable to be set aside and the entire matter requires fresh consideration.
6. We have given our careful and anxious consideration to the contentions put forward by the learned counsel for the appellant and also perused the
impugned order, the grounds of appeal and other materials available on record.
7 . At the outset, it is to be stated that on perusal, the impugned order dated 22/05/2012 reflects that the order contains 17 pages and out of the same,
pages 1-12 set out the facts of the case and the written submissions and claims made by the appellant. In page-12, the Controller has framed issues
and final decision contains in pages 13-17.
8 . It is pertinent to note the final objections raised at the time of hearing on 13/09/2010 as under:
1 . Claims are not supported by the description as there is no reference of comparison in the specification.
2. Revised claims 1-12 fall under section 3(d) of the Patents Act as no efficacy has been shown in the complete specification.
3. Revised claims 1-12 fall under section 3(e) of the Patents Act as synergism has not been substantiated by comparative clinical data.
4. Claim 13 and its dependent claims do not sufficiently define the invention.
9 . However, contrary to the final objections pointed out and incorporated in the impugned order, the Assistant Controller framed the following issues
for consideration and rendering decision as hereunder.
(i) Whether the claimed invention lacks novelty?
(ii) Whether the claimed invention lacks inventive steps?
(iii) Whether the claimed matter of the instant invention falls under the purview of section 3(d) of the Patents Act?
10. The above said contradictory consideration of the matter in respect of the claims made by the appellant demonstrates that the Assistant Controller
of Patents has not considered the entire claims made by the appellant coupled with the objections raised on the date of hearing on 13/09/2010 and
thereby the entire proceedings has been vitiated on the basis of total non-application of mind and the wrong consideration of the claims on the basis of
framing wrong issues. At this juncture, we are also constrained to point out that he has also quoted wrong section 25(1)(b) and 25(1)(e) in the
impugned order which are related to pre-grant representation as in the instant case there is no such representation at all made and ultimately in the
concluding para also the Assistant Controller referred the provision 25(1)(b) and 25(1)(e) which makes it crystal clear that the Assistant Controller
considered the entire matter on total misconception and non-application of mind to the actual claims made and issues involved in the instant case.
11. We are also constrained to point out that yet another serious infirmity found in the impugned order is the objections raised in the first examination
report dated 11/09/2009 were not found in the second examination report and in the hearing notice dated 13/09/2010. It is pertinent to note that the
objections regarding lack of novelty and inventive steps were originally raised in the first examination report which are totally absent in the subsequent
action thereby depriving the appellant to give explanation for those objections and put forward their claims effectively. It is also pertinent to note that
once the objections have been raised in the first examination report and the appellant submitted their explanations and the total absence of those
objections in this subsequent action on the date of hearing on 13/09/2010 would necessarily amount to waiver of those objections. However, it is
unfortunately to note that the Assistant Controller of Patents has gone into those objections and rendered findings with surprising additional objections
relating to section 3(i) of the Act which certainly vitiated the entire proceedings on the ground of total non-application of mind and misconception.
12. We are also constrained to point out specifically that having rendered finding in respect of claim - 1, the Assistant Controller of Patents simply set
aside the dependent claims 2-11 as well as independent claim 13 and dependent claims 14-21. The above said infirmities and inconsistencies reflected
in the impugned order makes it crystal clear that the impugned order was passed in flagrant violation of the principles of natural justice.
13. In view of the above said reasons, we are constrained to set aside the impugned order dated 22/05/2012 passed by the Assistant Controller of
Patents and Designs, Kolkata in respect of Indian Patent Application No. 1818/KOLNP/2006. The Assistant Controller of Patents and Designs shall
consider the entire matter afresh by furnishing the entire objections raised on the date of hearing enabling the appellant to give their explanations for
those objections and after affording reasonable opportunities to the appellant for advancing oral arguments as well as the written submissions. The
Assistant Controller of Patents and Designs shall pass final order on merits and in accordance with law. The Assistant Controller of Patents &
Designs shall furnish the objections within a period of 8 weeks from the date of receipt of the order. The final decisions shall be made within a total
period of six months from the date of receipt of the order.
