Patent Office Expected To Pass Final Orders Within Reasonable Period Not Exceeding 3 To 6 Months: Delhi High Court

The Delhi High Court has observed that the Patent Office is expected to pass final orders after concluding oral hearings within a reasonable period, which cannot be beyond three to six months, depending on the complexity of the case.

Justice Prathiba M Singh said that there are strict timelines prescribed in the Patents Act, 1970, and its Rules right from the filing of the request of examination, preparation of examination report by the examiner of patent, consideration of the report by the Controller, issuance of the statement of objections, reply to the statement of objections and the time for putting the application for grant of patent.

“The said timelines reflect the intention of the Legislature to ensure that no unnecessary delays are caused in the process of grant of patents. Though no specific period has been prescribed for passing of orders after concluding oral hearings, the Patent Office is expected to pass the same within a reasonable period,” the court said.

It added: “Such a reasonable period cannot be beyond three to six months in any case, depending on the complexity of the case.”

The court was dealing with a plea moved by an entity Procter and Gamble Company challenging an order passed by the Controller of Patents and Designs in 2018 rejecting its application for a patent titled “Detergent Compositions.”

The Patent Office had reserved the matter for orders on September 29, 2014. Four years later on October 05, 2018, certain clarifications regarding the patent were sought from the entity through an e-mail communication.

Noting that the impugned order was passed on October 08, 2018, on the next working day itself, Justice Singh said that the manner of dealing with a patent application was “extremely arbitrary and whimsical.”

“Firstly, when the judgment was reserved on 29th September, 2014, there was an obligation on the Hearing Officer to pass orders within a reasonable period. The time of four years which has been consumed is completely contrary to the scheme of the Act and Rules as also frustrates the purpose of patent filings. This entire period in fact works against the applicant who loses the life of the patent,” the court said.

Justice Singh added that such a course of action by the Patent Office would be contrary to the Patent Rules, 2003 which require the office to give at least a period of six months in respect of information sought under Section 8(2) of the Act.

“In the present case, a period of four years has elapsed after the hearing when the order was passed finally by the Patent Office, that too after issuing a notice under Section 8(2) of the Act for which adequate time for reply was not granted,” the court said.

Accordingly, the court remanded the matter back to the Patent Office for fresh consideration and directed that a fresh hearing shall be held on all the objections already raised in the hearing notices.

“No fresh objections shall be raised. The matter shall be heard afresh and a final decision shall be taken within three months. The Controller General of Patents, Designs and Trade Marks shall appoint a different officer for hearing of the present matter,” the court said.

Title: PROCTER AND GAMBLE COMPANY v. CONTROLLER OF PATENTS AND DESIGNS

Citation: 2023 LiveLaw (Del) 1295

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