Arcturus Therapeutics Inc Vs Assistant Controller of Patents and Designs

Patent examiners must issue reasoned orders considering all objections, responses, and oral submissions before rejecting an application

Brief Facts of the Case:

The appellant, Arcturus Therapeutics Inc, filed an Indian patent application (No. 201617019205) titled "Ionizable Cationic Lipid for RNA Delivery" as a national phase application under the Patent Cooperation Treaty (PCT) on 2 June 2016.  The First Examination Report (FER) was issued on 15 February 2019, raising objections under Section 2(1)(ja) (lack of inventive step) and Sections 3(d) and 3(h) (non-patentability) of the Patents Act, 1970. The appellant filed a response on 13 August 2019. Two hearings were conducted, on 29 March 2022 and 2 May 2023, after which the appellant was allowed to file additional written submissions by 17 June 2023. However, the appellant filed the submissions late, on 25 July 2023, by which time the Assistant Controller of Patents had already passed an order rejecting the patent under Section 15 of the Patents Act, 1970 due to the delay in submission.

Brief Issue:Whether the Assistant Controller of Patents was justified in rejecting the patent application solely on procedural grounds without examining the merits of the invention.

Reasoning of the Court:The Court noted that the impugned order did not examine the merits of the case and only rejected the patent based on procedural delay in filing additional written submissions. Patent rights are valuable rights, and their rejection based on a mere procedural lapse could have serious consequences for the applicant. The Assistant Controller should have passed a reasoned order considering: The objections in the FER, The response submitted by the appellant on 13 May 2022,Oral submissions made during the hearings, In similar situations, courts have taken a pragmatic approach to ensure that substantive patentability is evaluated rather than rejecting applications on technicalities, Given the peculiar facts of the case, natural justice principles required that the appellant’s patent application be reconsidered on merits.

Decision:The Court set aside the impugned order and remanded the case back to the Assistant Controller of Patents for fresh consideration on merits. A new hearing notice was to be issued, and the application was to be decided based on the existing record, without requiring any further submissions.

Law Point Settled:Patent applications should not be rejected solely on procedural grounds if substantive examination has not been conducted. Natural justice requires that patent applications be decided on their merits, especially where valuable patent rights are involved. Patent examiners must issue reasoned orders considering all objections, responses, and oral submissions before rejecting an application.

Case Title:Arcturus Therapeutics Inc Vs Assistant Controller of Patents and Designs

Date of Order: 24 February 2025

Case Number: C.A. (COMM.IPD-PAT) 40/2023

Neutral Citation:2025:DHC:1361

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon’ble Mr. Justice Amit Bansal

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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi