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Reply to First Examination Report in Patent Examination process

The case under discussion delves into the intricate realm of patent examination procedures, focusing on the reply to the First Examination Report (FER) and the subsequent rejection of a patent application. Filed under Section 117A of the Patents Act, 1970, the appeal challenges the order of the Assistant Controller of Patents Designs, which dismissed the appellant's patent application No.1241/DEL/2009.

The Appellant's Allegation:
The crux of the appellant's argument revolves around the alleged procedural irregularities and lack of substantive analysis in the impugned order. Specifically, the appellant contends that while the FER referenced prior art documents D1-D4, the impugned order relied on additional prior art document D5, which was not previously mentioned. This discrepancy raises questions about the fairness and consistency of the examination process.

Furthermore, the appellant asserts that the impugned order essentially replicated the content of the FER regarding prior art documents D1-D4 without any meaningful analysis or alteration. Despite the appellant's response to the objections raised in the FER, the Controller failed to provide a detailed assessment of how the cited prior art would render the invention obvious, thereby indicating a lack of application of mind.

The Court Analysis:
The Hon'ble High Court of Delhi's analysis underscores the deficiencies in the Controller's decision-making process. The court observed that the impugned order failed to offer any additional analysis or discussion regarding prior art documents D1-D4, particularly concerning the appellant's responses. Instead, the Controller merely reiterated the objections raised in the FER without providing a fresh or revised analysis based on the appellant's submissions.

Moreover, the court noted the absence of prior notice or discussion regarding prior art document D5 during the hearing, further complicating the matter. The reliance on D5 without prior intimation or opportunity for the appellant to respond raises serious procedural concerns and undermines the fairness of the examination process.

In setting aside the impugned order and remanding the matter for fresh adjudication, the Hon'ble High Court of Delhi reaffirmed the principles of procedural fairness and reasoned decision-making in patent examination. The court emphasized the Controller's obligation to conduct a thorough and independent analysis of the applicant's response to the FER, considering all relevant prior art documents and providing adequate reasoning for their decisions.

Overall, the case highlights the importance of procedural integrity and substantive analysis in patent examination proceedings, ensuring that applicants are afforded a fair and transparent process to present their case and address any objections raised during the examination process.

Case Title: Man Truck Bus SE Vs Controller of Patent
Order Date: 20.02.2024
Case No. C.A.(COMM.IPD-PAT) 16/2022
Name of Court: Delhi High Court
Neutral Citation:2024:DHC:985
Name of Hon'ble Judge:Anish Dayal,H J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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