Hon?ble Shri S.Chandrasekaran, Technical Member :
The instant appeal No.SR.No.138/2007/PT/IPAB has been filed before this Board, challenging the letter of communication of the Controller of Patents, IPO Delhi dated 30.03.2007 wherein the Controller of Patents has abandoned the patent application No.2688/DELNP/2005 filed on 17.06.2005 for grant of patent, under section 21(1) of the Patents Act, 1970. The above appeal is filed under section 117(A)(2) of the said Act which is before this Board to consider whether it is maintainable as an appeal against the order of the Controller of Patents, IPO, Delhi.
2. The said application for patent has been filed as a national phase application in the Intellectual Property Office, Delhi claiming the priority from the corresponding U.S. application No.10/306,564 filed in the USPTO on 27.11.2002. After duly filing the request for examination, the first examination report was issued on 20.03.2006, by the Controller of Patents. The appellants being the applicants for patent filed their First response to the examination report on 16.03.2007. Immediately, the IPO Delhi had conducted further examination on the said amended patent documents of this patent application and issued further examination report of 20.03.2007 which was the last date for putting the application in order for grant. The appellants? patent agent filed a response to the said examination report immediately on the same day and requested for an opportunity of being heard in case the Controller of Patents is likely to take an adverse decision refusing grant of patent. The Controller of Patents on 30.03.2007 communicated to the appellants? patent agents that the above mentioned application for Patent No.2688/DELNP/2005 was not put in order for grant within the period as stipulated in Section 21(1) of the Patents Act, 1970 namely, 20.03.2007. Section 21 (1) of the said Act reads as under:-
?21. Time for putting application in order for grant.- (1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.?
Therefore, the said application had become deemed to have been abandoned under the provisions of Section 21 (1) of the said Act. Being aggrieved by this communication, the appellants have come before this Appellate Board making a prayer that the impugned order dated 30.03.2007 of the Controller of Patents be set aside and for an order of grant of patent on their patent application No.2688/DELNP/2005 in their favour.
3. The Patents Act, 1970 does not provide for an appeal against the orders of the Controller of Patents under section 21 and therefore, it is to be considered whether such an appeal can be maintained before this Appellate Board in the first instance. In fact the Registry during its scrutiny raised an objection, seeking clarification as to how this appeal is maintainable under section 117(A)(2) of the Patents Act, 1970.
4. The matter came up for hearing before this Appellate Board on 03.12.2007. Learned counsel Shri Shantikumar appeared on behalf of the appellants. It is the contention of the learned counsel for the appellant that the Controller of Patents has taken a decision mechanically without any application of mind and the order did not contain any reason for refusal of the application filed by the applicants. He further stated that the appellants being the applicants for patent have complied with all the requirements imposed on them within the period stipulated under section 21 of the Patents Act, 1970. The learned counsel also reiterated that the authorities have also not given an opportunity of being heard when the amended specification including drawings of the applicants were submitted by their attorneys in the IPO Delhi on 20.03.2007 personally, thereby failing to follow the principles of natural justice to the appellants. In the light of the above, the learned counsel for the appellants submitted that the Controller of Patents by his order dated 30.03.2007 refused to proceed further with the application and hence the order is appealable under section 117 (A) (2) of the Patents Act, 1970. In this connection, Mr. Shanti kumar, learned counsel for the appellants relied on the judgment of the Calcutta High Court in AID No.7 of 1998 (Philips Electronics N.V. (formerly known as N.V.Philips? Gloeilampenfabrieken) Vs Controller of Patents & Designs and Ors.) wherein it was held that the Controller?s order having not contained any reason to show that the order has been passed upon proper application of the mind in as much as it did not appear from the order that the authority concerned considered the clarification given by the applicant and the case was remanded back to the Controller for deciding the matter afresh in accordance with law. The appeal referred to and decided in the said Kolkata High Court case relates to the repealed provisions of the Patents Act which stood prior to the amendment of the said Act by the Patents( Amendment) Act, 2002, whereas the present appeal is before us referring to the new provisions, namely, section 117(A) (2) which does not allow any appeal against the order of the Controller of Patents under section 21(1) of the said Act. Therefore, there is a clear distinguishing provision on which the matter has been decided and circumstances as it stands now is different, due to which the said Kolkata High Court case does not apply to the present appeal.
5. The learned counsel for the appellants also referred to (1991) 2 Supreme Court Cases 716 Maharashtra State Board of Secondary and Higher Secondary Education Vs. K.S.Gandhi and Ors., wherein it was observed that the order should exclude the chance to reach arbitrary, whimsical or capricious decision or conclusion and the order being quasi-judicial or administrative it shall require recording of germane and relevant precise reasons. The learned counsel for the appellants argued that taking the precedence from this Supreme Court case, which aids the appellate or revisional authority or the supervisory jurisdiction of the High Court under Article 226 or the appellate jurisdiction of this Court under Artticle136 to see whether the Authority concerned acted fairly and justly to meet out justice to the aggrieved person.
6. This appeal is before us for consideration as to its maintainability before this Appellate Board. Looking at the provisions of section 21(1) of the Act, it is very clear that ?an application for a patent shall be deemed to have been abandoned unless, the applicant has complied with all the official requirements imposed on him by or under this Act, within the stipulated period therein, whether in connection with the complete specification or otherwise in relation to the application.? Considering the provisions of law and the arguments put forth by the learned counsel for the appellants, the learned counsel?s contention is that this Appellate Board should consider the impugned letter of communication of the Controller of Patents, IPO Delhi dated 30.03.2007 as a refusal order under section 15 of the Patents Act, 1970 thus taking this appeal as maintainable under section 117 (A) (2) of the said Act. The Controller of Patents, IPO, Delhi has issued the order dated 30.3.2007 stating that the application had become deemed to have been abandoned under the provisions of section 21(1) of the said Act. The action taken by the Controller of Patents to issue an order under section 21(1) of the Act is entirely
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different from an order under section 15 of the Act refusing to grant a patent. 7. In view of the above, we are of the considered opinion that this appeal cannot be taken as an appeal against an order under section 15 of the Patents Act, 1970 treating the letter of communication of the Controller of Patents dated 30.03.2007 as an order of refusal under section 15 of the Act, when the Controller of Patents himself has not issued any such decision under section 15 of the said Act but he has proceeded under section 21(1) of the Act deeming the application as deemed to have been abandoned due to the non-compliance of the official technical requirements by the applicants for grant of a patent. 8. Hence, the office objection is upheld and consequently this appeal is dismissed as not being maintainable. However, there shall be no order as to costs.