[This post is co-authored with SpicyIP Intern Aarav Gupta. Aarav is a third-year law student at National Law University, Delhi. He is passionate about geopolitics, foreign policy, international trade, and intellectual property and spends his time reading and watching sports. His previous post can be accessed here. The authors would like to acknowledge an anonymous reader for sharing this development with us.] 

Over the course of the last 2 years, we have seen High Courts remand numerous orders (read: reject) to the Indian Patent Office for reconsideration. Two reasons that appear common in many of these remand directions are lack of proper reasoning on part of the Controller and the surprise element of new prior art being cited at the time of hearing (for instance see Justice Jyoti Singh’s comments discussed here, the decision in Grupo Petrotemex (discussed here), Perkinelmer Health Sciences Inc decision (discussed here)). A recent decision of the Delhi High Court in Man Truck Bus SE v. Asst. Controller of Patents is the latest addition in this list of remands on the above grounds. Setting aside the impugned order for citing a new prior art and not taking the appellant’s response concerning cited prior arts D1-D4, the Court categorically held the impugned order as a non speaking one and directed the Controller to dispose of the application in the next 6 months. 

But, it looks like 6 months was time aplenty for the Patent Office because after holding a hearing, the Controller decided to grant a patent, within just 29 days from the High Court’s remand! Also, not only was the decision passed in a lightning speed, but it can also give professional haiku writers a serious run for their money! Where the impugned order from the patent office (dated March 18, 2021) ran for 12 pages, the grant order (dated March 05. 2023) resolves the controversy merely in 5 lines. Now, we know that lengthy orders do not always translate to quality orders (in fact Prof. Basheer had a post lamenting about verbose judicial orders here), however, it’s quite ironic that an order which was set aside for being non speaking is replaced by a muter one, by merely flipping the original decision. In this post, we’ll take a look at the concerns expressed in the Delhi High Court’s remand order and if the Controller’s decision granting the patent addresses them. 

Concerns Expressed by the Delhi High Court 

As quick background, an appeal was filed by Man Trucks and Bus SA against the Controller’s order dated March 18, 202, rejecting its patent application for “Particle separator and method for separating particles of an exhaust stream of an internal combustion engine.” The Controller had then cited 4 prior art documents (D1-D4) in the First Examination Report and in the impugned order referred to a fifth prior art document (D5) to find that the invention lacks an inventive step. 

Before the High Court, Man Trucks argued that the contested order essentially repeated the objections in the FER concerning D1-D4, without considering its response in the written submission. The impugned order also failed to consider the patent granted to the subject invention in different jurisdiction. Furthermore, they argued that the Controller cited prior art D5 for the first time during the hearing and was not cited either in the FER or the Hearing Notice. Emphasizing extensively on the territorial nature of patents, the Patent Office argued that none of these prior art documents were cited in any other jurisdiction where the patent had been granted and that the Controller had correctly relied on D5 to conclude that a technical person with expertise in the art would be able to come up with the invention. Contrary to the first assertion here, Man Truck argued that the US patent office considered prior arts D1, D3, and D5 but eventually rejected them and the Controller failed to consider this submission made before them earlier. 

Without getting into the merits of the case, the Court called the Controller out for not analyzing the relevance of prior arts D1-D4, in light of Man Trucks response. The Court then relied on Agriboard International, PerkinElmer Health Sciences, and Otsuka Pharmaceutical Co., to reiterate that communication of objections is the key and the Controller cannot deny informing an applicant about fresh objections as it will put them in a serious disadvantageous position in the hearing. On the basis of these two grounds, the Court remanded the matter for reconsideration.  

At the cost of repetition, please note that the key issues are 1) Lack of “Analysis” in the impugned order; 2) Not informing the appellant about the new Prior Art D5. Therefore, ideally one would expect the Controller to undertake some analysis in their next finding right? But it seems like the Controller (same as the one who passed the impugned order earlier) decided to circumvent this obligation by simply reversing their original decision, in just 5 lines. (see the relevant para from the order below)

Brevity Thy Name is Indian Patent Prosecution? 

Of late we have started to see that relevant documents in Indian patent prosecution seem to be getting shorter and shorter. As pointed out in this linkedin post by Vivek Kumar, recently the Patent Office granted a patent to an invention with merely 7 lines of claims and 3 pages of complete specifications. Similarly, this order simply accepts the (unsaid) “facts and the circumstances” of the case and proceeds to grant a patent. But what needs to be kept in mind is that these documents are not only a part of a needless procedural formality, but are key instruments in ensuring that the society and inventors are getting into the patent bargain after thorough checks. These documents are crucial in explaining to others what the invention is all about and if after a thorough examination, concerns expressed by the Patne Office have been addressed by the applicant, or not. Furthermore, as discussed by Swaraj and I here, these orders are also important in later stages of patent litigation like revocations (if any) too where the Courts rely extensively on the reasoning and findings of the patent office for their eventual decision. 

But in the present situation, the first order was set aside for being non speaking/ unreasoned and then the second order barely says anything. Therefore, can one confidently say that the examination of the application has actually happened? Whether the amendment claims actually meet the patentability criteria? 

Another offshoot of this decision is that it has the capability of diluting the credibility of the Indian Patent Office before other jurisdictions. Remember, one of the grievances of Man Truck before the Delhi High Court was that the Patent Office did not defer to the multiple grants to the invention across different jurisdictions. The Court also directed the Controller to consider facts related to Man Trucks’ corresponding patent applications in other jurisdictions. This is because these orders serve as robust reference points for the Patent Office while examining a patent. Historically, we have seen institutions relying extensively on the findings of the European Patent Office in order to justify their findings on a specific issue. Considering this intertwined scheme where patent offices of other countries do rely on each other’s findings, findings as such may undermine India’s position as a fair and even jurisdiction, granting quality patents. 

Lastly, this ordeal also raises another pressing concern i.e. who is looking after the quality of orders granting a patent? It is pertinent to note that in the present case, Man Truck was an aggrieved party and therefore, approached the Court against rejection order. However, now that the patent has been granted, who will question the reasoning of the order granting the patent? (see this post by Swaraj and I for more on this). Tangentially, in such cases, oppositions do play an important role in aiding and assisting in the examination process. But considering that it’s difficult and expensive to file oppositions now, it looks like we’ll be seeing even fewer of them in the future. 

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• Source: https://spicyip.com/2024/04/whos-looking-at-the-quality-of-decisions-granting-patents-some-concerns-from-the-man-truck-v-asst-controller-case.html