INTRODUCTION
A recent ruling by the Hon’ble Calcutta High Court has brought the forefront essential considerations in post-grant opposition cases within India’s patent system. The case involves an appeal filed by Terex India Private Limited against the order passed by the Deputy Controller of Patents on August 02, 2024, which upheld a patent granted to CDE Asia Ltd. for application number 307249.
This order was significantly criticized for lacking substantial reasoning and failing to incorporate the recommendations of the Opposition Board. The present case highlights the importance of transparency, thorough examination, and strict adherence to legal standards in patent adjudication. Post-grant opposition serves as a crucial mechanism allowing third parties to challenge the validity of a granted patent within one year of its issuance on grounds such as lack of novelty or inventive step. However, the order by the Deputy Controller, in the present case, was criticized for being a mechanical and template-based, lacking detailed, independent reasoning as well as disregarding the suggestions of the Opposition Board.
CASE BACKGROUND
Terex India Private Limited filed an appeal against the Deputy Controller’s order dated March 2, 2023, which rejected their post-grant opposition seeking the revocation of Indian Patent No. 307249. This patent, granted to CDE Asia Ltd. On February 12, 2019, pertains to a “SYSTEM/DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS.”
Terex argued that:
- Non-patentability: The claimed system and method were already publicly disclosed and were in use prior to the relevant date.
- Lack of Novelty: The patent did not sufficiently disclose the interconnection of subsystems, and the combination of known devices did not result in a novel outcome.
- Section 3(f) Compliance: The invention was merely a rearrangement of known devices, each functioning independently, rendering it non-patentable.
- Deficient Order: The Deputy Controller’s order was criticized for merely reiterating the patentee’s submissions without providing independent reasoning or adequately considering the Opposition Board’s recommendations.
The Calcutta High Court identified several key issues with the Deputy Controller’s order:
- Flawed Reasoning: The court found that the order by the Deputy Controller did not comply with the essential standards for determining patentability and lacked independent analysis and reasoning. It merely documented the arguments and submissions of the parties.
- Disregard for Recommendations: The Deputy Controller, in his order, failed to consider the Opposition Board’s recommendations, which is contrary to established legal standards. The court emphasized the necessity of considering the Opposition Board’s report while deciding any matter under Section 25(4) of the Patents Act.
- Mechanical Decision-Making: The court criticized the Deputy Controller for issuing a formulaic and unoriginal order that only reiterated the details of the invention and its claims without providing substantive reasoning for the final decision.
- Subjective Decision-Making: The court found the approach of the Deputy Controller to be capricious, complicating the court’s ability to assess the merits of the order. The lack of sound logic and defined criteria indicated a subjective, rather than objective, decision-making process.
- Importance of a Speaking Order: The court underscored the necessity of a “speaking order” with clear, well-founded reasoning to uphold the principles of natural justice. Providing adequate reasoning in judicial orders is crucial to ensuring fairness and preventing future complications.
OUTCOME AND IMPLICATIONS:
The Deputy Controller, while concluding the matter, merely stated:
“In view of the findings upon the facts of this case, upon consideration of the Notice of Opposition, Statements and evidences,/affidavits of both the parties, and the arguments put forwarded by their -Learned counsels at the hearing and the circumstances of the case it is hereby ordered that the post grant opposition lodged against the patent no. 3072497 is dismissed. Now simply refusing, the matter which were discussed in person during hearing is not only jeopardizing the rights of the Applicant but also creating a backlash for the purpose of having hearing in person.
CONCLUSION
The court’s ruling highlighted the necessity for a “speaking order” with clear, well-founded reasoning to ensure transparency and fairness. It highlighted that patent authorities must provide thoroughly reasoned decisions to uphold the integrity of the patent system and ensure equitable adjudication in opposition proceedings.
This ruling sends a clear message to patent authorities and other administrative bodies that mechanical, template-based selections will no longer be acceptable. The court docket’s insistence on impartial reasoning and proper consideration of all parties’ arguments serves to shield the integrity of the patent opposition manner. By remanding the case to an exclusive officer, the court aims to ensure that the new evaluation is conducted without bias or pre-determined conclusions, thereby upholding the principles of fairness and impartiality.
