Jesal Vimal Jetha filed a patent application in 2018 for a customizable comforter system with a supporter for therapeutic use, addressing issues like backache and posture through adjustable compartments for individual body needs.
The First Examination Report (FER) in January 2020 raised objections on novelty and inventive step based on prior arts D1 and D2, to which the appellant responded. Subsequent hearing notices introduced additional prior arts D3, D4, and D5, leading to hearings in July and September 2020 where the appellant submitted detailed technical replies.
The Controller rejected the application in October 2020 under Section 2(1)(ja) for lack of inventive step without adequately considering the appellant's responses, particularly the July 2020 reply addressing D3-D5, and contained factual errors in analyzing prior arts.
The Delhi High Court, finding violations of natural justice due to non-consideration of key submissions, jurisdictional infirmities, procedural unfairness, and inconsistencies like shifting the closest prior art from D1 to D3, set aside the rejection order and remanded the matter for fresh consideration with a new hearing, clarifying that merits were not examined.
- The failure to consider the appellant's detailed technical response to objections based on newly cited prior arts in the hearing notice constitutes a violation of natural justice and procedural fairness Para 13.
- The Controller's impugned order must explicitly advert to and consider all submissions, including highly technical responses to prior arts, and absence thereof renders the decision unfathomable and invalid: Para 15.
- Factual errors in the Controller's analysis of prior arts, such as misstating positional rearrangement of compartments not disclosed in the cited document, indicate non-application of mind and require judicial interference: Para 16.
- The ability to arrange or re-arrange compartments in any spatial manner, including multilayer stacking, may constitute a novel inventive feature when contrasted with linear parallel arrays in prior arts, and failure to address this vitiates the rejection: Para 17.
- Procedural fairness in patent examination may require issuance of a Second Examination Report (SER) under Section 13(3) of the Patents Act in cases involving amendments or new objections, to ensure all issues are compositely put to the applicant before response: Para 18.
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
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