Introduction

The case of Auckland Uniservices Limited v. Assistant Controller of Patents and Designs (2022 DHC 4336) adjudicated by the Delhi High Court on September 27, 2022, stands as a pivotal moment in the realm of patent law in India. This appeal addressed the refusal of a patent application by the Assistant Controller of Patents and Designs, challenging the grounds on which the application was denied. Central to the dispute were issues concerning the inventive step of the claimed invention and the procedural propriety of issuing a reasoned order in patent rejections.

Summary of the Judgment

Auckland Uniservices Limited filed a patent application for an invention titled "Magnetic Field Shaping for Inductive Power Transfer." The Assistant Controller of Patents and Designs refused the application, citing a lack of inventive step under Section 2(1)(j) of the Patents Act, 1970, referencing prior art documents US20070064406A1 (D1) and WO2010098547A2 (D2). Auckland challenged this refusal under Section 117A(2), arguing that the refusal lacked sufficient reasoning and did not adequately address the inventive aspects of their invention.

The Delhi High Court, presided over by Hon'ble Ms. Justice Jyoti Singh, found merit in Auckland's contention that the Respondent's order was devoid of adequate reasoning. Emphasizing the fundamental principles of natural justice, the Court set aside the impugned order, remanding the matter for reconsideration with explicit instructions to provide a detailed, reasoned decision within four months.

Analysis

Precedents Cited

The judgment extensively referenced established legal principles and precedents to substantiate the necessity for reasoned orders. Key among these were:

• Assistant Commissioner, Commercial Tax Department, Works Contract and Leasing, Kota v. Shukla and Brothers (2010) 4 SCC 785: Emphasized that administrative authorities must provide clearly reasoned orders to ensure transparency and allow for meaningful judicial review.
• Pipe Arts India Pvt. Ltd. v. Gangadhar Nathuji Golamare (2008) SCC OnLine Bom 289: Reinforced the principle that judicial and quasi-judicial bodies must provide reasoned orders to facilitate appellate scrutiny.
• F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (2015 SCC OnLine Del 13619): Outlined the five-step test for determining inventive step under the Patents Act, which includes identifying the skilled person, inventive concept, common general knowledge, differences from prior art, and assessing obviousness.
• Agriboard International LLC v. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 940): Highlighted the three essential elements the Controller must consider when rejecting an invention for lack of inventive step.

Legal Reasoning

The Court underscored that any order, especially one that affects the rights of an applicant, must be reasoned. This ensures that:

• The affected party understands the basis of rejection, allowing for informed appeals or corrective actions.
• Higher courts can effectively review and evaluate the decisions of lower authorities.

In this case, the indictment was not just on the lack of inventive step but also on the procedural deficiency regarding the absence of a detailed reasoning in the refusal order. The Court held that the Respondent failed to engage with the substantive arguments presented by the Appellant, thereby violating the principles of natural justice.

Impact

This judgment reaffirms the judiciary's stance that administrative and quasi-judicial bodies, including patent authorities, are bound by the doctrine of reasoned decision-making. It sets a precedent that:

• Patent refusal orders must provide clear and detailed reasoning, especially when inventive step is contested.
• Lack of reasoned orders can render administrative decisions susceptible to being overturned, ensuring greater accountability.

For patentees and applicants, this means that authorities must meticulously document the rationale behind rejections, considering all arguments and evidence presented.

Complex Concepts Simplified

Inventive Step

The "inventive step" refers to a feature of an invention that distinguishes it from prior art and is not obvious to someone skilled in the relevant field. It is a crucial criterion for patentability, ensuring that only genuinely novel and non-obvious inventions are granted patents.

Prior Art

"Prior art" encompasses all public knowledge and inventions that predate a given patent application. It includes published patents, academic papers, products in the market, and other disclosures that can influence the assessment of an application's novelty and inventive step.

Doctrine of Natural Justice

This legal doctrine mandates fair treatment in legal proceedings. It includes the right to be heard (audi alteram partem) and the requirement for decisions to be free from bias. In the context of administrative actions, it ensures that affected parties receive clear reasons for decisions that impact their rights.

Conclusion

The Delhi High Court's decision in Auckland Uniservices Limited v. Assistant Controller of Patents and Designs reinforces the indispensable nature of reasoned orders in patent law. By overturning an unreasoned patent refusal, the Court not only safeguarded the principles of natural justice but also set a clear expectation for patent authorities to uphold transparency and thoroughness in their decision-making processes. This landmark judgment serves as a crucial guide for both patent applicants and authorities, ensuring that the pursuit of innovation is balanced with procedural fairness and legal integrity.