Blackberry Limited Vs Assistant Controller of Patent

Introduction Blackberry Limited filed a patent application in India for a method and system related to signaling release cause indication in a UMTS network. The application was examined by the Indian Patent Office, which raised several objections, including issues of novelty, inventive step, clarity, and amendments to the claims.

Proceedings and Objections The Patent Office issued a First Examination Report highlighting objections under Sections 2(1)(j), 3(k), 3(m), 8, 10(4)(c), and 10(5) of the Patents Act. Blackberry responded with detailed amendments and written submissions aiming to overcome those objections. Subsequently, the Controller conducted hearings but rejected the amendments, citing non-compliance with Sections 57 and 59 of the Act. The Controller’s order was cryptic, failing to analyze whether the amendments were within the scope of these sections.

Legal Contentions and Court’s Analysis Blackberry argued that their amendments were in the nature of corrections or explanations supported by the original specification, and therefore, should have been allowed. They relied on legal precedents emphasizing that amendments should be supported by the specification and within the scope of the relevant sections. The Court noted that the Controller’s rejection lacked adequate reasoning and did not consider whether the amendments were permissible under Sections 57 and 59. The Court observed that decisions on patent amendments must be reasoned and based on application of mind, as mandated by judicial precedents.

Order and Remand The Court set aside the Controller’s order due to this lack of reasoning and remanded the matter back for de novo consideration. It directed the Controller to afford a fresh opportunity for hearing, including a detailed examination of the proposed amendments in light of applicable legal provisions. 

Case Details Case Title: Blackberry Limited Vs Assistant Controller of Patent Date of Order: 23 April 2025 Case Number: C.A.(COMM.IPD-PAT) 125/2022 Neutral Citation:2025:DHC:3100 High Court of Delhi Judge: Hon’ble Mr. Justice Amit Bansal