Towards A Brighter Future: Enhancing Reasoning And Natural Justice In Indian IP Litigation

Republished By Plato

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Intellectual Property remains at the heart of promoting innovation across jurisdictions. Patent and Trademark litigation play a crucial role in safeguarding and enforcing IP rights in every jurisdiction including India. Principles of natural justice apply to Intellectual property cases just as they apply to other laws, and it is the role of every carrier of law to ensure such principles are followed. In India, the Controller of Patent and Trademarks is bestowed with the power to grant or reject trademarks and patents by using appropriate reasoning as provided under Indian laws governing IP in India (Indian Trademark and Patent Act). However, recent developments in Indian courtrooms have highlighted significant issues surrounding IP litigation in India. Such issues include the lack of proper reasoning in patent and trademark orders, a series of copy-paste judgments being pronounced without delving into intricacies of specific cases and upholding the principles of natural justice, increasing patent fillings and grants failing to achieve their aim under the hindsight of non-working patents and the pilling cases with the trademark and patent offices after the dissolution of the IPAB. The article seeks to analyse such issues in detail to develop a thought-provoking reasoning and path of IP litigation in India in the coming years.

The Delhi High Court’s Reflection of the Patent Office

Principles of natural justice lie at the core of everything that has been going wrong in recent patent and trademark decisions. These principles also known as procedural fairness, encompass fundamental legal principles that govern fair decision-making processes. These principles include the right to be heard, ensuring that all parties have the opportunity to present their case and respond to allegations; the rule against bias, requiring decision-makers to be impartial and free from conflicts of interest; the rule of reasoned decision, mandating that decisions be based on clear and rational reasoning; notice, providing parties with adequate and timely information about the proceedings; consideration of relevant and reliable evidence; and the right to an impartial tribunal, ensuring that decision-makers are unbiased and independent. These principles are crucial in upholding fairness, transparency, and integrity in intellectual property litigation and safeguarding the rights of all parties involved.

These principles hold immense significance in intellectual property litigation, as exemplified by recent cases that highlight the need for well-reasoned patent orders. It is safe to say that 2023 has been the year of unreasoned orders by the Indian Patent office. The Delhi High Court’s indictment of the lack of reasoning in rejection orders in various cases this year underscore the importance of adhering to the principles of natural justice in patent-related decisions.

Interestingly, even judges have agreed to the increasing number of un-reasoned orders by patent controller and the trademark registry and why this is problematic. The Delhi High Court’s IPD released its Annual Report 2022-23, where Justice Jyoti Singh (on page number 34), a former member of the IPD, highlighted the lack of sufficient reasoning in recent orders from IP Offices. Justice Singh noted instances where grounds raised by opponents were not considered, rejections were based on prior art not cited in the First Examination Report (FER) or hearing notice, and non-patentability grounds were raised without being addressed during prosecution. She regarded this as a clear violation of the principles of natural justice. Justice Singh also discussed appeals against rejection orders with unclear analysis of inventive step and highlighted issues in the functioning of the Trademarks Registry, including excessive pendency of trademark applications, faulty advertisements, and delays in examination reports and renewals. These shortcomings have resulted in unnecessary and prolonged litigation.

Well, it cannot be denied that speaking orders, which provide clear and explicit reasoning and speak for themselves, are the cornerstone of any patent or trademark order, as they are essential for ensuring reasoning justice, transparency, and upholding the principles of natural justice in such decisions. Let’s dive into some cases that highlight the lack of speaking orders.

In Blackberry Limited v. Assistant Controller of Patents and Designs, the court criticized the lack of proper reasoning in paragraphs 5 and 6 of the impugned order. It pointed out that merely repeating the claims made by the appellant without providing an explanation or supporting reasons is insufficient. The court stressed that providing reasoning in an order is crucial for natural justice, as it helps the applicant understand the grounds for appeal and enables effective judicial review. The court emphasized that the absence of reasoning in an order renders the entire order invalid. In the case at hand, while the details of the invention and proceedings were adequately noted, the lack of reasoning supporting the final decision made it arbitrary and suggested a subjective determination. The court urged the avoidance of such mechanical and cut-and-paste orders and emphasized the need for well-articulated reasons to ensure proper consideration and effective judicial review. The court pointed out that the reasons for dismissing the arguments of the appellant, as mentioned in the impugned order, were merely a word-for-word replication of their own claims. Referring to a previous decision, the court emphasized that the question of granting or rejecting a patent is a serious matter that requires the concerned officers of the Patent Controller’s office to apply due diligence and provide well-articulated reasons in their orders. This not only ensures the protection of the applicant’s rights but also allows for effective judicial review if necessary.

Further, in Rosemount Inc. v. Deputy Controller of Patent and Designs, the dispute centred around a patent application for a “Process Device with Density Measurement” and the subsequent rejection order by the Controller. The appellant argued that they had adequately responded to the First Examination Report (FER) and hearing notice, highlighting the distinctiveness of their invention compared to prior art. However, the Controller’s order lacked proper analysis of the appellant’s explanations and merely focused on the prior art, concluding that the amended claim lacked inventive step. The court emphasized that the impugned order violated the requirement for a speaking order and cited previous cases (Agriboard International LLC v. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 940), Auckland Uniservices Limited v. Assistant Controller of Patents and Designs (C.A.(COMM-IPD-PAT)), N.V. Satheesh Madhav and Anr. v. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 4568), Alfred Von Schukmann v. The Controller General of Patents, Designs and Trademarks and Ors (C.A.(COMM.IPD-PAT) 435/2022)) to emphasize the need for the patent office to provide a reasoned analysis of prior art and explain how the subject invention lacks novelty. In Grupo Petrotemex v. Controller of Patents, the case involved a patent application that was rejected on new grounds of objection that were not raised previously. The appellant argued that the objections in the FER and hearing notice only cited lack of novelty, but the impugned order, issued on the same day as the hearing, rejected the application on the ground of lack of inventiveness. The court remanded the matter back to the patent office, emphasizing that all grounds of objection must be made known to the applicant prior to the hearing to ensure procedural fairness.

Sauch orders are not restricted to the patent office. In this trademark case of Shell Brands International AG v. Registrar of Trademarks, the court emphasized that objections under Section 11(1) must cite the allegedly similar marks, ensuring transparency and accountability in the decision-making process. The court recognized that the Registrar’s failure to cite the alleged similar mark and provide a proper explanation violated the principles of natural justice. By setting aside the impugned order and directing the Registrar to publish the mark within three months, the court reaffirmed the importance of well-reasoned orders grounded in the principles of natural justice.

The Role of Patent Orders in Appeals

These decisions have no doubt underscored the reliance of any appellate body on the order passed by its subordinate authority and the assistance it offers in framing a wholesome understanding of the issue at hand. The patent prosecution process followed before the patent office is a lengthy and exhaustive affair, encompassing different rounds of submissions and clarifications. Therefore, it is only reasonable to expect that the final order passed after the examination of the application will encapsulate all the relevant details in a comprehensible manner. Doing so plays a very important role, especially when the orders are appealed against by an aggrieved party. Well-reasoned orders help the appellate authority to be well-versed with the issues involved and make well-reasoned and well-informed decisions. Thus, it becomes absolutely imperative that the orders passed by the patent office are discernible, recognizing the wider role played by them in serving the ends of justice.

We Might Have a Solution

The solution might have been given in the Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs case. In addition to addressing the issue of patentability for computer-related inventions, the judgment in this case provides valuable insights into how clear guidelines and examples can contribute to more reasoned orders by the Patent Office. By establishing comprehensive guidelines and incorporating worked examples, the Patent Office can offer reliable signposts to examiners, promoting consistency and reducing discrepancies in their decisions. This approach ensures that examiners consider the substance and technical contribution of an invention, rather than relying solely on its description. By providing specific technical criteria for assessing inventions and incorporating judicial guidance, the guidelines enable applicants to understand the expectations of the Patent Office and draft applications that effectively showcase the technical merits of their inventions. Ultimately, these measures promote transparency, predictability, and improved quality in the examination process, facilitating the issuance of more reasoned orders by the Patent Office.

Patents as Incentives to Innovate

The Delhi High Court has acknowledged the importance of patents as a recognition of creative efforts in inventing. Inventions advance scientific knowledge and hold immense public value. Therefore, granting or denying patents requires thoughtful consideration and reflection. Lengthy delays in patent approval shorten their effective lifespan and discourage inventors from pursuing new and innovative methods, products, or processes. The recent rulings emphasize the negative consequences of unnecessary delays in the patent system and stress the significance of well-thought-out decisions to uphold its integrity. These directives aim to ensure progress in the right direction.