Non-speaking patent opposition order cannot stand

The Bombay High Court, per Justice Arif S. Doctor, set aside the Deputy Controller of Patents’ order dated 7 July 2023 dismissing a post-grant opposition to Patent No. IN 283059.

The opposition had been filed under Section 25(2)(c) of the Patents Act, 1970. The petitioner relied on prior art D1, Indian Patent Application No. 1249/DEL/2010, which was later granted as Patent No. IN568478. The petitioner’s case was that D1 had an earlier priority date of 31 May 2010, while the impugned patent’s provisional specification carried a priority date of 15 September 2010. It was also pointed out that the impugned order itself recorded that D1’s claims were identical to those of the granted patent.

The Court noted that the Controller had dismissed the opposition by stating that D1 was not an “appropriate document” within the meaning of Section 25(2)(c), but without explaining why. The order also recorded that the technical disclosure had not been examined. On that basis, the Court held that the order was wholly unreasoned and reflected complete non-application of mind.

The Court accepted the petitioner’s submission that reasons are the foundation of judicial and quasi-judicial determinations. A litigant is entitled to know why a conclusion has been reached, and an appellate court can test the correctness of an order only if reasons are given. The Court drew a clear distinction between inadequate reasoning and absence of reasoning, and held that this case fell in the latter category.

The Court also rejected the respondents’ attempt to justify the order by inviting the Court to examine the matter afresh. It held that such an approach would amount to the Controller abdicating the statutory duty to decide the opposition by a reasoned order in the first instance.

Accordingly, the impugned order was set aside and the matter was remanded for fresh consideration before a different Controller. The Court kept all rights and contentions open.

Practical takeaway: A patent opposition order under Section 25(2)(c) must show how the Controller reached the conclusion, or it risks being set aside.