Background:
The appellant, filed a National Phase Patent Application No. 202017011947 for a "Composition, Methods, and Apparatuses for Catalytic Combustion" based on a PCT Application. The application was examined, and a First Examination Report (FER) was issued. The appellant responded to the FER and amended the claims. However, due to financial difficulties, the appellant's Patent Attorney did not attend a scheduled hearing, and the Controller of Patents and Designs refused the patent application. The appellant sought revival of the application, which was not responded to, leading to this appeal.
Arguments:
Appellant: The detailed reply to the FER should have been considered, and the Controller was obligated to pass a reasoned order. The non-attendance at the hearing should not be considered abandonment, especially since the appellant had requested disposal of the application as per the Patent Act.
Respondent: The appeal is misconceived, and the appellant's failure to attend the hearing and provide a clear reason (beyond financial difficulties) indicates a conscious decision to abandon the application.
Judgment:
The Court found that the Controller's order was not reasoned and did not consider the appellant's detailed response to the FER. The Court emphasized that abandonment requires a conscious act, which was not established in this case. The Court set aside the Controller's order and remanded the matter for fresh consideration, allowing the appellant to file written submissions within five days of the judgment. The Controller is directed to decide the matter on its merits
Case Citation: Star Scientific Limited Vs Controller of Patent:30.07.2024 :C.A.(COMM.IPD-PAT) 20/2024 : 2024:DHC:2643: Delhi High Court: Minipushkarna: H.J.
Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
The appellant, filed a National Phase Patent Application No. 202017011947 for a "Composition, Methods, and Apparatuses for Catalytic Combustion" based on a PCT Application. The application was examined, and a First Examination Report (FER) was issued. The appellant responded to the FER and amended the claims. However, due to financial difficulties, the appellant's Patent Attorney did not attend a scheduled hearing, and the Controller of Patents and Designs refused the patent application. The appellant sought revival of the application, which was not responded to, leading to this appeal.
Arguments:
Appellant: The detailed reply to the FER should have been considered, and the Controller was obligated to pass a reasoned order. The non-attendance at the hearing should not be considered abandonment, especially since the appellant had requested disposal of the application as per the Patent Act.
Respondent: The appeal is misconceived, and the appellant's failure to attend the hearing and provide a clear reason (beyond financial difficulties) indicates a conscious decision to abandon the application.
Judgment:
The Court found that the Controller's order was not reasoned and did not consider the appellant's detailed response to the FER. The Court emphasized that abandonment requires a conscious act, which was not established in this case. The Court set aside the Controller's order and remanded the matter for fresh consideration, allowing the appellant to file written submissions within five days of the judgment. The Controller is directed to decide the matter on its merits
Case Citation: Star Scientific Limited Vs Controller of Patent:30.07.2024 :C.A.(COMM.IPD-PAT) 20/2024 : 2024:DHC:2643: Delhi High Court: Minipushkarna: H.J.
Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
