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Judgment
The present appeal is filed under Section 117A of the Indian Patents Act, 1970, against the order dated 14/12/2012, passed by the Respondent no.2,
being the Assistant Controller of Patents & Designs, under Section 15 of the Indian Patents Act, refusing to grant the Appellants’ Indian patent
application no. 877/KOL/2005.
On compliance of the order of this Board dated 14/12/2020, the appellant has amended of memos of the parties; removing the name of the
examiners therefrom. Therefore, the memo of the parties is in order now.
The learned counsel for the appellant has submitted his argument before this Board only on one issue; i.e. violation of the principles of natural
justice, particularly so, as the learned Controller who has passed the impugned order dated 14/12/2012 in patent application no. 877/KOL/2005, was
himself the examiner, who examined the instant patent application and hence it’s the case that no person can be a Judge of his own cause.
The learned counsel has submitted proof of First examination Report showing that the present Controller, then as examiner has examined the
present application and issued the report as shown below:
4.1 During issuance of the Second Examination Report (SER) dated 15/09/2008, the concerned examiner was the same person as is evident from the
report shown below:
4.2 Again a subsequent examination report was prepared by the same examiner as indicated below:
4.3 The impugned order dated 14/12/2012, against which this appeal has been filed, is also issued by the same person as Assistant Controller of
Patents and Designs. The last page of the impugned order is quoted herein below:
4.4 The learned counsel of the appellant submits that it becomes very much evident that the person, who has passed the impugned order and the
author of First Examination Report, the Subsequent Examination Report (1), and the Subsequent Examination Report (2) are one and the same.
4.5 In support of his argument he also refers to an earlier order of this Board in OA/23/2011/PT/DEL wherein this Board held:
“11. The next contention is that the first examination report as well as the author of the impugned order are one and the same and the perusal of
the first examination report and the impugned order substantiate the contention of the learned counsel for the appellant as it is very much evident that
the person, who has passed the impugned order and the author of first examination report are one and the same. It is against the well-established
principle that no man can be a Judge for his own cause….â€
The scheme of the Patents Act, 1970 and the role of the examiner and the Controller is statutorily defined in sections 12-15 quoted herein below for
reference:
Section 121 Examination of application
(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section
(1) or sub-section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the
Controller to an examiner for making a report to him in respect of the following matters, namely:â€
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any
rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section
(1) shall ordinarily make the report to the Controller within such period as may be prescribed. [Emphasis added]
Section 132
Search for anticipation by previous publication and by prior claim.
(1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the
invention so far as claimed in any claim of the complete specificationâ€
(a) has been anticipated by publication before the date of filing of the applicant's complete specification in any specification filed in pursuance of an
application for a patent made in India and dated on or after the 1st day of January, 1912;
(b) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant's complete specification, being a
specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date.
(2) The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the
complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before
the date of filing of the applicant's complete specification.
(3) Where a complete specification is amended under the provisions of this Act before the grant of patent, the amended specification shall be
examined and investigated in like manner as the original specification.
(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent,
and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or
investigation or any report or other proceedings consequent thereon.[Emphasis added]
Section 14 Available at http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps14.html Consideration of the report of examiner by Controller
Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any
amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made
thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate
as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an
opportunity of being heard.
Section 154 Power of Controller to refuse or require amended applications, etc., in certain case Where the Controller is satisfied that the application or
any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder,
the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to
his satisfaction before he proceeds with the application and refuse the application on failure to do so.
Therefore, it is amply clear that the roles of the examiner and the Controller are uniquely defined in the statute and it is never expected that same
person will prepare the examination report after conducting the examination and will receive the report himself as per the teachings of section 14 and
take final action in accordance with provisions of section 15 as well. If this was done, it is a clear violation of principle of natural justice.
Hon’ble Supreme Court in Canara Bank vs V.K. Awasthy Available at https://indiankanoon.org/doc/1086058/ held that “Over the years by
a process of judicial interpretation two rules have been evolved as representing the principles of natural justice in judicial process, including therein
quasi-judicial and administrative process. They constitute the basic elements of a fair hearing, having their roots in the innate sense of man for fair-
play and justice which is not the preserve of any particular race or country but is shared in common by all men. The first rule is `nemo judex in causa
sua' or `nemo debet esse judex in propria causa sua' as stated in (1605) 12 Co.Rep.114 that is, `no man shall be a judge in his own cause' Coke used
the form `aliquis non debet esse judex in propria causa quia non potest esse judex at pars. (Co.Litt. 1418), that is, `no man ought to be a judge in his
own case' because he cannot act as Judge and at the same time be a party' The form `nemo potest esse simul actor et judex', that is, `no one can be at
once suitor and judge' is also at times used.â€
The Patent office follows this practice and tries referring the matter to some other Controller in case of his/her promotion from the post of
examiner. Somehow, in the instant application the practice hasn’t been followed.
The Controller, herein, must have acted and written his order in complete fairness but the principle of natural justice demands that the element of
biasing, as raised by the appellant, must be totally removed from the minds of the appellant.
Therefore, in the interest of justice, and to remove all short of confusion from the mind of the appellant, we are of the opinion that the order of the
Controller is to be set aside.
It is also pertinent to mention that since the matter was not argued on technical merit of this case, this order restrict itself to the lone issue of
natural justice.
We, therefore, set aside the impugned order dated 14/12/2012 issued by the respondent no 2, and direct the respondents to refer the matter to
some other Controller, who may decide the matter in accordance with law; giving fair opportunity of being heard to the applicant, within 3 months
from the issuance of this order.
Keeping in view the above facts and circumstances, the instant appeal is allowed. No cost.