Image from here
[This post is co-authored with Swaraj Paul Barooah]
Various authors on this blog have repeatedly pointed out the lack of proper reasoning in patent orders, both from courts (see here) as well as from the patent offices (see here). This issue has also been pointed out by courts recently (see here, here and here). A few days ago, Justice Hari Shankar of the Delhi High Court came out with probably the strongest indictment of this practice. In Dolby International v. Asst. Controller of Patents and Designs (pdf.), the Delhi High Court in very explicit terms called out the office of Controller of Patents and Designs for doing “little justice to the solemn functions” entrusted upon them with regards to their rejection order of Dolby’s patent application. In fact, at one point (para. 5) the court remarks that only one sentence in the order can be linked to any kind of reasoning! It’s high time that this kind of emphasis is provided on actual reasoning in patent-related orders and it’s very encouraging to see this push from the bench.
The court, in saying that it is unable to examine the issue on merit due to ‘the completely arbitrary manner in which the impugned order has been passed’, mentions a number of issues that are worth reading in full and can be seen in paras 3-7 in particular. Perhaps more significantly, the court also makes noteworthy observations on why these orders need to be well-reasoned.
Role of the Orders from the Patent Office in Appeals
The court underlined the reliance of any appellate body on the order passed by its subordinate authority and the assistance it offers in framing a wholesome understanding of the issue at hand. It is worth appreciating that the patent prosecution process followed before the patent office is a different ball game altogether and is a lengthy and exhaustive affair, encompassing different rounds of to and fro submissions and clarifications. Therefore, it is only obvious to expect that the final order passed after the examination of the application will encapsulate all the relevant details in a comprehensible manner. Doing so plays a very important role, especially when the orders are appealed against by an aggrieved party as it helps the appellate authority to be versed with the issues involved and thus, take a well-reasoned and well-informed call eventually. Thus, it becomes absolutely imperative that the orders passed by the patent office are discernable, recognizing the wider role played by them in serving the ends of justice.
Patent as an Incentive to Innovate vis-a-vis Right to Exclude
The court notes that “A patent is meant to be a recognition of the innovative step that has been put into crafting of an invention. Inventions increment the state of existing scientific knowledge and, thereafter, are of inestimable public interest. Any decision, whether to grant or refuse a patent has, therefore, to be informed by due application of mind, which must be reflected in the decision…..Unreasonable delay in grant of a patent results in reduction of the residual life of the patent, which can itself be a serious disinclination for inventors who seek to invent new and innovative methods, products or processes.”
In this observation, the court touches upon two fundamental premises of patent policy – that of patents as an incentive to innovation, and the patent bargain. Recognizing that patents are granted for the purposes of incrementing the state of existing scientific knowledge, and impliedly, not as mere private rights, places ample emphasis on the requirement for (well) reasoned orders whether it is for the grant or refusal of a patent.
The court also notes the unnecessary delay that has taken place here, by virtue of an unreasoned order, that needs to now be remanded and heard afresh. Noting that the patent period would start from the time of application, the court recognises that unnecessary delays reduce the incentive of applicants to enter into the patent bargain with the state.
On the basis of the reasons discussed above, the court remarked that the impugned order failed to satisfy “the most fundamental requisites of an order adjudicating on a claim for registration of patent” and thus set it aside, expressly underlining that the matter should not be decided by the officer who has passed the impugned order.
As mentioned above, this order is another addition to the recent trail of unreasoned rejections by the patent office. While it is obvious that in cases like these where undiscernible orders are passed, rejecting a patent application, the applicant will approach the appellate authority. However, one wonders about the fate of similar cryptic, unreasoned orders, eventually granting the patents. Who will appeal against these? Some more food for thought from these orders is the state of manpower and training in the patent office, which there is already a dearth of. (pg. 27 and 28) And, with the rampant increase in the number of applications (see the latest IP India annual report for 2021-22 here), it is only going to get more tasking for the officers of the patent office.