IPAB makes the Indian Patent Office see the importance of doing things right the first time
In a spate of orders recently (see here, here and here), the Intellectual Property Appellate Board (IPAB) has asked the Indian Patent Office (IPO) to consider those matters afresh because the IPO’s orders lacked reasoning.

In the matter of India Patent application No.1880/DELNP/2005, the IPO had issued the First Examination Report (FER) citing lack of invention step and Sections 3(d) and 3(e) of the Patents Act (Act). The applicant dutifully responded. The IPO further issued examination reports maintaining the same objections without informing the applicant as to why his response was not sufficient.

The IPO then issued a hearing notice maintaining the objection under Section 3(e) of Act. Pursuant to the hearing, the IPO refused patent to the application on grounds of Section 3(d) and that it lacked inventive step. There was no mention of Section 3(e) in the order which was the reason for the hearing.

The applicant argued that the IPO had waived the objections of lack of inventive step and Section 3(d) by not mentioning it in the hearing notice and had also waived the objection under Section 3(e) by not mentioning it in its order.  The IPAB agreed.

Further the IPO had cited a prior art in its order which was not brought to the attention of the applicant during any of the IPO’s numerous official communications to the applicant. The IPAB held “Any document that will be relied on must be made known to the appellant before the date of hearing for their reply”. The IPO was asked to decide the matter afresh.

In the matter of Indian Patent Application No.3900/DELNP/2007, the IPAB observed that IPO had just stated the principles should be applied for deciding obviousness of an invention and not how they were applicable in this case. The IPAB also noted that the IPO had not reasoned as to why the invention is not patentable. Holding the IPO’s order to be vague, the IPAB asked the IPO to consider the matter afresh.

Finally, in the matter of Indian Patent Application No. 5294/DELNP/2005, the FER was issued for lack of novelty, lack of unity of invention and for claims not being properly worded. The applicant responded by revising its claims and deleting the claims that reflected lack of unit of the invention.

Following this, the applicant discussed its application in person with the examiner. The examiner maintained that the application lacked unity of invention and also expressed that the invention amount to “computer program per se” and therefore not patentable per Section 3(k) of the Act. The applicant responded to the examiner’s oral objections (it is not clear from the IPAB’s order if this response was in writing) and further removed the claims which reflected lack of unity of the invention.

Upon further discussion during which the applicant explained the invention, the examiner accepted that the invention was not a “computer program per se” and therefore withdrew the objection under Section 3(k) of the Act. Later, the applicant received a hearing notice which did not specify the objections of the examiner and the applicant sought details of the objections. The examiner responded by appointing another date for hearing and stated that the claims fall within the purview of Section 3(k) of the Act.

During the hearing, the examiner pointed that the invention was merely an algorithm.  The applicant had explained that the invention was directed to a technical solution to a technical problem existing in the area of wireless mobile communication. However, since the examiner was not convinced, the applicant sought time to make fresh submissions explaining why the invention was not a mere algorithm. But, before the applicant could make its submissions, the examiner rejected the patent application stating that the invention was an algorithm.

The IPAB, upon appeal, held that the applicant had not been given the opportunity to explain its invention and said that the IPO’s order was just a statement with no finding. With this, the IPO was asked to hear the matter again.

These three orders of the IPAB somehow points to the IPO’s trend of issuing orders without following the established principles of natural justice. In one of these aforesaid orders, the IPAB exasperatedly stated that it had “time and again held in many number of cases” that the IPO should mention the reasons for its decision especially when the decision adversely affects a patent applicant.

Given its existing workload, the IPO is already staggering. Do they really need more work?

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