Brief Fact:
Tahoe Research Ltd., an Irish company, filed an Indian patent application (No. 201647014734) for an invention titled "Method for training a control signal based on a stroke signal in a memory module." The Patent Office issued a First Examination Report (FER) on 27.09.2019, raising objections on novelty and inventive step. The applicant responded, and a hearing notice was issued on 23.02.2022, primarily objecting to a lack of clarity (Section 10(4) of the Patents Act, 1970) and novelty, particularly in light of prior art document D3. The Controller rejected the application on 19.01.2024.
Procedural Background in Brief
FER Issued (27.09.2019): Raised objections on novelty and inventive step.Response by Appellant (26.03.2020): Addressed objections.Hearing Notice (23.02.2022): Raised objections on clarity and novelty.Submission of Written Arguments & Amended Claims (28.03.2022): Incorporated features of original claims 2 and 4 into independent claim 1.
Order Rejecting Patent Application (19.01.2024):
Cited lack of clarity and novelty, referencing European Patent Office (EPO) proceedings.Appeal Before the Madras High Court under Section 117A of the Patents Act, 1970.
Reasoning of the Court
Violation of Natural Justice: The rejection was based on objections to claims that were not originally objected to in the hearing notice, depriving the appellant of an opportunity to respond.Flawed Novelty Analysis: The Controller adopted the European Patent Office's (EPO) reasoning without recognizing material differences between the independent claim before the Indian Patent Office and the one before the EPO.Remand for Reconsideration: The Court found the rejection procedurally flawed and remanded the case for fresh consideration.
Decision:
The Madras High Court set aside the rejection order dated 19.01.2024 and remanded the matter for reconsideration under the following terms:
Case Title: Tahoe Research Ltd. Vs. The Controller of Patents
Date of Order: 18.02.2025
Case Number: CMA(PT)/35/2024
Neutral Citation: Not mentioned in the judgment.
Court: High Court of Judicature at Madras
Hon’ble Judge: Justice Senthilkumar Ramamoorthy
