Ulm University v. Asst. Controller of Patents and Designs: Madras High Court quashes unreasoned order of Patent Office
Mathews P. George
The Madras High Court, vide judgement dated 3 July 2024 in University of Ulm v. Asst. Controller of Patents and Designs, came down heavily on the IPO for its shoddy order rejecting the patent application filed by the appellant. The judgment raises serious concerns regarding the quality of functioning of the patent office.
Facts
In the given case, the University of Ulm (Germany) filed a patent application (Application No.645/CHENP/2011 filed on 31.01.2011) concerning use of Opioids or Opioid Mimetics for the Treatment of Resistant Cancer Patients. The appellant filed various prior art documents and the USPTO decision that granted the patent after evaluation of the prior art documents.
Order
The Patent Controller issued a cryptic order rejecting the patent application. It did not discuss the prior art documents and the USPTO decision at all. In other words, it was not a reasoned order that set out the reasons for rejection of the patent application.
The High Court came down heavily on the Patent Controller: “Admittedly, the order impugned decision appears to be a very cryptic decision. While dealing with the prior arts, I do not find any discussion whatsoever as to how the patent application of the appellant is obvious to a person skilled in the art and none of the prior arts are discussed in this regard. Equally and as rightly pointed out by the learned counsel for the appellant, despite Form-3 being filed by the appellant bringing it to the notice of the respondent that a US patent has been granted after noting D6, the respondent has not even discussed the same in the impugned decision.” (Para 6)
Remanded the Application back to the Patent Office
The High Court remanded the matter back to the Office of Assistant Patent Controller; but asked the Office to ensure that the patent application is evaluated by another Controller. (“I deem it fit to remand the matter to the respondent/Assistant Controller of Patents and Designs for fresh consideration. However, the respondent shall assign the task of scrutinizing the patent application of the appellant to a different Patent Controller to avoid any embarrassment to the parties, after affording a personal hearing to the appellant and the application shall be decided, within a period of three months from the date of receipt of a copy of this order.” paragraph 8)
Comments
It is unfortunate that the quality of the Indian Patent Office continues to be a red flag. I had earlier penned down an article titled ‘A Critical Examination of the Patent Enforcement Landscape in India’ – wherein I critically evaluated the quality of Indian patent enforcement framework (Journal of Intellectual Property Law and Practice, Volume 17, Issue 10, October 2022).
The above patent application was filed in 2011. Note that the Indian Patent Law grants 20 years exclusive period from the date of filing of patent application (Section 53). That means, 13 years is already over. What is the meaning of this system after all? Who shall pay for the lethargy / inefficiency / incompetency of the Patent Office? Will the concerned Patent Controller ever pay any price at all (considering the silence of the statute on inefficient / incompetent officials)?
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Mathews P. George