Delhi Court holds undue delay in passing the final order by the Patent Office is arbitrary

The court opined that this manner of dealing with a patent application was extremely arbitrary and whimsical and when the judgment was reserved on 29 September 2014, there was an obligation on the Hearing Officer to pass orders within a reasonable period. The time of four years that had been consumed was completely contrary to the scheme of the Act and Rules and frustrated the purpose of patent filings as this entire period in fact works against the appellant who loses the life of the patent. 

Summary

This article summarises a recent order passed on 8 December 2023 in the case of Procter and Gamble Company v. Controller of Patents and Designs (C.A.(COMM.IPD-PAT) 268/2022) whereby the Delhi High Court set aside the order of the Patent Office on the grounds of delay in passing the order after the conclusion of oral hearings. The court in its order noted, “Though no specific time period has been prescribed for passing of orders after concluding oral hearings, the Patent Office is expected to pass the same within a reasonable period. Such a reasonable period cannot be beyond three to six months in any case, depending on the complexity of the case.”

Court analysis

The court noted the following chronology: 

1. After the hearing before the Controller on 29 September 2014, the hearing officer reserved its orders to consider oral and written submissions. 
2. On 5 October 2018, four years after the hearing was concluded, a notice under Section 8(2) of the Act was issued by the Patent Office requiring the applicant to provide the status of corresponding patent applications. The court noted that notice under Section 8(2)  was issued four years after the matter was reserved for orders. 
3. The impugned order refusing the application was passed on 8 October 2018, that is on the next working day itself. 

The court opined that this manner of dealing with a patent application was extremely arbitrary and whimsical, and when the judgment was reserved on 29 September 2014, there was an obligation on the Hearing Officer to pass orders within a reasonable period. The time of four years that had been consumed was completely contrary to the scheme of the Act and Rules and frustrated the purpose of patent filings as this entire period in fact works against the appellant who loses the life of the patent. 

Further, the court opined that the Patent Office, after having sought clarification and certain documents on 5 October 2018, suddenly proceeded to pass orders rejecting the patent application on 8 October 2018 without giving an opportunity to the appellant to deal with the issues raised in the communication of 5 October 2018. The court opined that such a course of action by the Patent Office would be contrary even to the Patent Rules, 2003 (‘the 2003 Rules’) which required the Patent Office to give at least six months in respect of information sought under Section 8(2) of the Patent Act.

Relevant law

The court referred to Sections 14 and 21 of the Patent Act and Rule 24(B) of the 2003 Patent Rules and opined that there were strict timelines which were prescribed both in the Act and the 2003 Rules right from the filing of request of examination, preparation of the examination report by the examiner of patent, consideration of the examiner’s report by the Controller, issuance of statement of objections, reply to statement of objections and the time for putting the application in order for grant. These timelines reflect the Legislature’s intention to ensure that no unnecessary delays were caused in the process of granting patents. The court also opined that though no specific time was prescribed for passing of orders after concluding oral hearings, the Patent Office was expected to pass the same within a reasonable period and such a reasonable period could not be beyond three to six months in any case. 

Decision

The court thus set aside the impugned order and directed the Patent Office to take the following steps:

1. Reflect the change of status of the present application on its website and show the same as pending within two weeks. 
2. Upon the same being reflected as pending, the appellant shall, by 15 January 2024 respond to the notice dated 5 October 2023 and furnish all the requisite information by 15 January 2024. 
3. Thereafter, a hearing should be held in the first week of February 2024 and upon its conclusion, the final order might be passed within three months. 

The court held that a fresh hearing should be held on all the objections that were already raised in the hearing notices, but no fresh objections should be raised; the matter should be heard afresh, and a final decision should be taken.

Our comments

The court ruling has reignited the debate on the time taken by the Patent Office to grant a patent and whether such time should be excluded from the term of the patent. In other words, extend the term of a patent to compensate for the delay in prosecution. This aspect was debated by the committee formed by the Delhi High Court in WP (C) No. 3742 of 2013 and WP (C) No. 3756 of 2013 in the case of “Nitto Denko Corp v. Union of India.” The committee concluded that the extension of the patent term was not conducive to India and the 20-year patent term was considered sufficient to encourage competition. 

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