In the case of Wisig Networks Private Limited v. Controller General of Patents, Design, Trademark, and Geographical Indications and Ors. (OA/11/2020/PT/CHN), the Intellectual Property Appellate Board (‘IPAB’) set aside the refusal order passed by the Assistant Controller of Patents & Designs (Respondent No. 2). The impugned order was held to be wholly void of reasoning and the IPAB remanded the case to Respondent No. 2 to decide the matter based on merits. The IPAB further ordered Respondent No. 2 to provide an opportunity for a hearing to the petitioner and decide the Indian patent application within three months from the date of the IPAB’s order.
Facts of the case
The appellant, Wisig Networks Private Limited, an Indian Startup, filed the Indian National Phase patent application No. 201847032415 with the Indian Patent Office (‘IPO’) on 29 August 2018. Respondent No. 2, after examining the Indian patent application, issued a First Examination Report (‘FER’) on 25 February 2019 where the claims were objected for lacking inventive step over the prior arts cited in the FER. The appellant responded to the FER along with claim amendments on 23 August 2019.
Respondent No. 2, after considering the reply to the FER, retained the inventive step objection in view of the prior arts cited in the FER and some additional prior arts and offered a hearing to the appellant, which was held on 15 October 2019. After the hearing, the appellant filed a written submission along with the claim amendments on 24 October 2019.
Upon hearing the appellant, Respondent No. 2 rejected the Indian patent application under Section 15 of the Patents Act, 1970 (‘Act’) vide an order dated 14 January 2020. The reasoning was that the claims are not allowable as per Section 59 of the Act for being beyond the scope of the as-filed claims. In addition, the application was rejected on lack of inventive step in view of the prior arts without providing proper reasoning. The appellant then filed an appeal under Section 117A of the Act against the impugned order dated 14 January 2020, on the grounds that the order has been passed without correctly applying the principles of a test of obviousness.
Observations of the IPAB
The major observations of the IPAB are given below:
Importance of quality in view of quantity
Upon review of the impugned order, the IPAB observed that the impugned order does not provide any reasoning as to how the claimed subject matter is obvious and lacks an inventive step in view of the cited prior arts. As per the IPAB, the impugned order for the present case appears to be disposed hurriedly without due consideration. The IPAB opined that the disposal of orders without proper reasoning may be a result of the system of grading of the Examiners and the Controllers based on the quantity of work they do.
The IPAB indicated that although a check on the quantity of the work being done by an officer at the IPO is essential due to huge number of pending patent applications, but the quality of the work done being done by the officer cannot be ignored. The IPAB elucidated that the work done by the Examiners and the Controllers should be a careful combination of the quantifiable and qualitative work. The IPAB stated that while the speed (for disposal of patent applications) is necessary, the accuracy with speed is also essential. The IPAB concluded that there is a need to focus on Quality Management with respect to the examination of applications, and the quality should not be compromised while keeping in view the quantity of the work being done.
Importance of a reasoned Order
Upon review of the impugned order, the IPAB observed that the impugned order straightaway and bluntly concludes that the claimed invention has been disclosed in the cited prior arts and can be implemented by a person skilled in the art without providing any reasoning as to how the claimed subject matter does not include an inventive step in view of the cited prior arts. In view of the enormous judicial pronouncements,, which pose a duty on quasi-judicial authority to pass a reasoned order, the IPAB set aside the impugned order and remanded back the case to Respondent No. 2 for deciding the case on merits.
The IPAB also stated that as per the various judicial pronouncements, the reasoning is the heartbeat of every conclusion and introduces clarity in an order. Without proper reasoning, an order becomes dodgy and lifeless. Further, natural justice poses a requirement on a decision-maker to write proper reasons for all the statements and conclusions made by the decision-maker in any order. Thus, providing reasons in support of a quasi-judicial order is as important and basic as following the principles of natural justice. Further, the rule of providing reasoning in an order should be observed in its proper spirit, merely pretending to comply with this rule does not satisfy the requirement of law, which means that the reasoning should be clear, legal, and factual.
Inventive Step test
Reasons in an order provide assurance to the Applicant as to whether the decision-maker has passed the order on relevant grounds or not. Further, burden of providing reasons in an order also compels the decision-maker to apply proper tests before passing an order. As the impugned order does not provide any reasoning as to how the claimed subject matter is obvious and does not include an inventive step in view of the cited prior arts, the IPAB opined that no test for determination of inventive step has been applied by Respondent No. 2 for the present case. Thus, the IPAB set aside the impugned order and remanded the case to Respondent No. 2 for deciding the case based on merits.
As per the latest guidelines for examination of computer-related inventions (CRI), the following points are needed to be objectively judged to ascertain whether, looking at the invention as a whole, the invention has an inventive step or not:
- Identify the "person skilled in the art", i.e. competent craftsman or engineer as distinguished from a mere artisan;
- Identify the relevant common general knowledge of that person at the priority date;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
- Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?
As the impugned order is void of any reasoning with respect to the above-mentioned points, it is clear that the Controller had not applied the steps given above for determining the existence or otherwise of inventive step.
Through the order, the IPAB clearly set out and reconfirmed that the IPO should provide reasoned refusal orders and should not dilute the quality of examination of any patent application keeping in view only the quantity of work. For an applicant, getting to know the reasons for refusal of a patent is as much important as getting a merit-based grant to a patent. Passing an order for rejecting the grant of a patent under Section 15 of the Act without providing any reasoning is an abuse of the powers conferred on the Controller.
[The author is a Patent Analyst in Intellectual Property Rights team in Lakshmikumaran & Sridharan Attorneys, New Delhi]