In a recent Judgement, the Delhi High Court (“Court”) decided on an appeal filed by Microsoft Corporation to set aside the decision of Controller General of Patents and Designs (“Controller”) dated 05th March 2012 refusing the grant of Indian patent application 487/DELNP/2006 (“subject patent”) under Section 15 of the Patents Act.

      In the present case, the Controller had refused Microsoft Corporation’s patent application, citing reasons under section 3(k) and section 10(4). The Controller deemed the claims to be categorized as an algorithm under section 3(k). Further, the Controller opined that the method claims did not meet the required format, were redundant, verbose, and lacked clarity, thus rendering the claims not patentable under section 10(4). Microsoft Corporation appealed against the Controller's decision, arguing that refusal order provided insufficient and ambiguous reasoning for the rejection.

      The Court found merits in Microsoft Corporation’s contentions and allowed the appeal. In allowing the appeal, the Court thoroughly scrutinized every ground cited in the Controller’s refusal order and made the following observations:

a. Regarding the mention of claims 1 to 41 are not in “method step format”, the Court deemed this assertion erroneous, as the Controller had treated all claims uniformly as method claims, despite claims 37 to 41 falling under the system claim category. Additionally, the Court pointed out that the term "method step format" was not defined or found in the Law.
b. During analysis of the claims made in the subject patent, the Court found that simply dismissing them as mere statements (so the claims are redundant, verbose & large size) would be a disservice to the intricacies of the invention. The Court delved into the interpretation of Section 10 (4) and 10 (5), emphasizing that claims for patent applications can be lengthy and complex, depending on the nature of the invention. The Court also emphasized that the number and language of the claims should not be restricted. However, the Court underscored the importance of drafting precise and well-structured claims that accurately convey the inventive concept. In the specific case of the subject patent, the Court found fault with the imprecise and generic approach used by the Controller in refusing the subject patent. The Court stressed that simply labelling the claims as noncompliant with format was insufficient. Instead, controllers should identify and communicate specific issues and deficiencies related to the claims or their language to the Applicants during the examination process itself, thereby affording Applicants with an opportunity to amend the claim or provide counter reasoning to such objections.
c. Regarding the presence of a plurality of independent sets of claims and large claims, the Court clarified that it is natural for system and method claims to overlap, as a specific system may be employed to execute the claimed method, or the method might be facilitated by the system. The Court mentioned that it is commonplace for applicants to include both claim types in a patent application to ensure comprehensive protection of the invention, making it arduous for competitors to circumvent the patent.
d. Regarding objection under Section 3(k), the Court directed the Controller to scrutinize the claims of the subject patent in the context of the ruling in Ferid Allani v. Union of India and Ors., a decision which was not available at the time of examination of the subject patent, which dealt with patentability under Section 3(k) of the Act.

      Overall, the Court criticised the lack of rationale for refusing the subject patent by the Controller. The ruling places great importance on articulating precise concerns rather than relying on generic reasoning by merely citing the relevant sections of law while issuing refusal orders/examination reports. The Court emphasized on raising the objections in a comprehensive manner, with clear delineation of any objections that may exist.

      The subject patent has been referred back to the patent office for re-examination and the Patent Office has been directed to issue a fresh notice of hearing, raising all objections in comprehensive manner. Further, the Court has mandated that a decision be made within three months and has ordered that the patent application be assigned to a different officer than the one who passed the impugned order.

      In light of the current ruling, we expect to see issuance of examination reports/hearing notices that provide more lucid reasoning and comprehensive explanations for objections raised under specific sections, highlighting the precise concerns of the Controller. Such an examination process would help Applicants in understanding the exact concerns of the Controllers, thereby rendering them with an opportunity to make suitable amendments and/or provide suitable counter arguments against the specific concerns. As a result, such untenable orders would reduce, guaranteeing that patent applications receive due consideration without any compromise on the standards of justice.


      Madhuri Gupta is a Senior Associate at the firm's Patents team and has rich experience of over 6 years in drafting and prosecution of patent applications across various jurisdictions She regularly represents clients in patent and design hearings before the Indian Patent Office and advises clients and inventors on IP strategy and Patent law.