Recently, the Calcutta High Court, while setting aside the refusal order of the Controller of Patents (“Respondent”), remanded the patent application back to the Controller for a fresh reconsideration and issuance of Second Examination Report (SER) within three months.
A patent application titled “charging system and charging method, power adapter”, bearing Application No. 201737035802, was filed by Guangdong Oppo Mobile Telecommunications Corp., Ltd. (“Appellant”). The Application was examined, and subsequently refused, by the Controller, on the grounds that the same is inter-alia not patentable under Sections 2(1)(j) and 10(4) of the Patents Act, 1970 (“the Act”) i.e., lacked novelty and inventive step. The Appellant argued that the impugned refusal was de-facto a non-speaking order as it did not substantiate cogent reasons for rejection of the application. Further, the Appellant argued that the impugned order used the words “novel” and “inventive” interchangeably without appreciating the meaning and content thereof. In addition, it was argued that additional prior art references were introduced impromptu, during the Hearing, without giving the Appellant a reasonable opportunity to consider such prior art and respond to them. Lastly, the Appellant contended that no SER was issued despite amendment of claims after objections raised in the First Examination Report, thereby resulting in non-examination of the amended specifications.
The Hon’ble Court held that the impugned order lacked reasoning and failed to demonstrate the rationale as to how the prior art documents defeated the novelty of the subject invention. The Court also noted that the combination of prior art documents must have a common thread and cannot be based on hindsight deductions. Regarding the issuance of the SER, it was observed that as per Section 13(3) of the Act, an amendment application must be examined in a manner similar to the original application. Lastly, it was condemned that the Appellant was neither granted an opportunity to amend its claims nor was an SER issued. The Court, accordingly, set aside the refusal order and remanded the patent application back to the Controller for a fresh reconsideration, and issuance of SER upon examination of the amended claims.
GUANGDONG OPPO MOBILE V THE CONTROLLER OF PATENTS, AID NO. 20 OF 2022.