It is evident that the IP framework of the country is currently undergoing a significant transition. Among other factors, this could primarily be attributed to the emergence of India as one of the key markets for global industries, which is further substantiated by the increasing number of patent applications being filed in India in the last few years and the Indian government’s vigorous efforts to smooth and strengthen the overall ecosystem.

While the Indian Patent Office (IPO) and the applicants are also navigating their fair share of challenges to adapt to the evolving ecosystem, the principles of natural justice still form one of the fundamental pillars of the entire examination proceedings and cannot be dispensed with under any circumstances. This was reiterated in one of the recent judgments by the Hon’ble High court of Delhi in the matter of Microsoft Technology Licensing LLC v. Assistant Controller of Patents.

This judgment addresses three points, i.e., the validity of a ground of refusal that was not raised in any office action, the validity of the ground of lack of inventive step that is based on a prior art document that was cited in the First Examination Report (FER) but not in the hearing notice, and consideration of the foreign prosecution history by the IPO while deciding on the grant of an application.

This matter was an appeal filed under Section 117A of the Patents Act against an order dated November 30, 2021, which was issued by the Assistant Controller of Patents and Designs (Respondent), rejecting the appellant’s patent application 9642/DELNP/2011 for an invention titled “Discovery of Secure Network Enclaves”. The respondent refused the application on two grounds:

i) Lack of inventive steps in the invention and

ii) Indefiniteness of Claim 2, violating Section 10(4) of the Act.

On the ground of indefiniteness of Claim 2, the appellant argued that the respondent did not raise this ground in the FER or the hearing notice. Only in the impugned order did the appellant learn about this objection. This is a clear violation of the principles of natural justice, as the appellant was never provided with an opportunity to address this objection during the hearing.

The appellant then argued that while the Controller, in the impugned order, relied on the prior art documents D1 to D3 to arrive at the conclusion of lack of inventive step, analysis and claim mapping in the impugned order are provided only for D1. Moreover, D2 was not even cited in the hearing notice, which led the appellant to believe that the respondent is convinced of the appellant’s arguments provided against D2 in their response to the FER and has therefore not cited D2 in the hearing notice. The appellant, accordingly, did not offer arguments to D2 in the hearing submission.

The appellant also discussed the history of the foreign prosecution of the application and informed the court that both D1 and D2 were cited by the European Patent Office (EPO) during the prosecution of the corresponding EP application. In fact, the appellant’s arguments presented before the EPO were found persuasive, and the patent was subsequently granted.

On the other hand, the respondent defended the impugned order by submitting that there is no infirmity therein.

After hearing both parties, the court first enunciated the provisions of Section 10(4) by stating that the sub-section stipulates that the specification must fully and particularly describe the invention, its operation or use, and the method by which it is to be performed. It also requires the disclosure of the best method of performing the invention. Therefore, compliance with the detailed requirements of Section 10(4) is indispensable for patent applications.

The court also reiterated the obligation of the IPO to clearly articulate any deficiency identified in the patent application in the FER or the hearing notice. This provides the applicant with a fair opportunity to address the deficiencies suitably. The court, therefore, held that the conclusion that a specified claim violates Section 10(4) without a detailed exposition of the non-compliance specifics is not legally tenable. The absence of such critical analysis or specific rationale renders the impugned order deficient in legal substantiation on this matter.

On the grounds of lack of inventive step, the court acknowledged that D2 was not cited in the hearing notice but is considered by the respondent in the impugned order to justify the lack of inventive step. The appellant, therefore, never got an opportunity to address D2 during the hearing or in the hearing submission. Moreover, D3 was not cited in either the FER or the hearing notice but is cited in the impugned order. The court remarked that such procedural irregularities undermine the fairness and integrity of the examination process, being violative of principles of natural justice.

Regarding the consideration of foreign prosecution history, the court acknowledged that the objections relating to D1 and D2 raised in the FER and the hearing notice were derived from the office actions issued by the EPO during the prosecution of the corresponding EP application. The court also noted that the EPO thereafter granted the patent. In fact, the pending claims in India were similar to the granted claims in the EPO.

The court, therefore, remarked that while the IPO is mandated to conduct an independent examination of the patent applications, the grant of the patent in other jurisdictions does warrant due consideration. This is more critical in such cases where the objections mirror the examination reports of other jurisdictions, at least because the grant indicates that the appellant’s amendments effectively addressed the objections based on D1 and D2 to the satisfaction of the EPO, suggesting a level of inventiveness and patentability that met the criteria set forth by an established patent authority. This context could have been instrumental in the respondent’s decision-making process, offering a perspective that the deficiencies could indeed be fulfilled through claim amendments.

The court, however, clarified that it does not suggest that the IPO align its decisions with those of the EPO by default. Rather, successful amendment and approval of the claims by the EPO could provide valuable context for a comprehensive examination process by the respondent. The court, therefore, set aside the impugned order dated November 30th, 2023, and remanded the matter to the respondent for de novo consideration.

This judgment by the Delhi High court reiterates that the IPO cannot refuse a patent application without a reasoned and speaking order and on grounds not presented before the applicant during the examination proceedings. Also, while the foreign prosecution history is

not binding, it shall be considered by the IPO, at least in the context of a comprehensive examination of the Indian application. This judgment shall serve as a guiding beacon for the IPO to issue clear and detailed office actions and reasoned orders. From the applicant’s perspective, this shall aid the applicants in prosecuting their applications before the IPO more effectively.