This article delves into a Hon’ble Delhi High Court order in the Milliken patent appeal (C.A.(COMM.IPD-PAT) 15/2023), where a patent application refusal was remanded for de novo review. The core issue revolved around the non-consideration of an expert statement filed by the appellant, Milliken and Company. The Hon’ble High Court emphasized the importance of considering relevant evidence, even if from an employee expert, and directed a fresh hearing by the Assistant Controller of Patents and Designs. This decision underscores procedural fairness in patent application reviews and the potential impact of an ignored expert statement on the outcome of a patent remand.
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1. Brief Facts of the Case
The appeal, C.A.(COMM.IPD-PAT) 15/2023, was filed by Milliken and Company (appellant) under Section 117(A) of the Patents Act, 1970. It challenged an order dated 17th February, 2023, passed by the Learned Assistant Controller of Patents and Designs. This impugned order had refused the grant of Indian patent application no. 6093/DELNP/2013, titled ‘Additive Compositions and Thermoplastic Polymer Compositions Comprising the Same’ (subject application). The respondents in the case were the Controller of Patents and Designs & Anr. The matter was heard before the Hon’ble Mr. Justice Amit Bansal of the High Court of Delhi.
2. Timelines of the Case
The key dates associated with the subject patent application are as follows:
DATE |
EVENT |
|---|---|
January 25, 2011
|
Priority application US 13/013,277 filed
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December 20, 2011
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PCT Application (PCT/US2011/065987) filed
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July 08, 2013
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IN 6093 filed in India
|
July 08, 2013
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Request for examination filed
|
December 12, 2014
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The application was published under the provisions of Section 11(A) of the Patents Act, 1970 as amended in 2005.
|
August 03, 2016
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Pre-grant Opposition filed by the Opponent
|
November 10, 2017
|
First examination report (FER) issued by the Indian Patent Office
|
November 10, 2017
|
Notice of the Opposition to the Applicant
|
May 01, 2018
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Response to First Examination Report filed.
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February 08, 2018
|
Reply Statement filed by the Appellant
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December 01, 2022
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Hearing notice issued
|
January 06, 2023
|
Hearing
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January 19, 2023
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Written submissions filed by the Applicant both under section 14 and section 25(1)
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February 17, 2023
|
Decision under Section 15 of the Indian Patents Act issued refusing the grant of patent on the application
|
May 16, 2023
|
Hence the present Appeal
|
3. Issue Before the Indian Patent Office & Appellant's Grievance
The primary grievance of the appellant, Milliken and Company, stemmed from the Learned Assistant Controller’s alleged failure to consider a crucial piece of evidence: a statement by Dr. Nathan A Mehl. This statement was submitted by the appellant along with their post-hearing written submissions. The appellant contended that Dr. Mehl’s statement directly addressed the objections raised by the Learned Controller of Patents and the grounds for refusal cited in the impugned order. The refusal of the patent application, therefore, was seen by the appellant as flawed due to this non-consideration, prompting the appeal to the Hon’ble High Court for a remand and de novo consideration.
The Learned Assistant Controller had raised objections including lack of inventive step and insufficiency of disclosure.
4. Hon'ble High Court's Findings on Key Issues
The Hon’ble High Court, after hearing counsel for both parties and perusing the material on record, addressed several points raised concerning Dr. Nathan A Mehl’s statement. The key findings are summarized below:
Issue Raised/Argument by Respondent |
Hon'ble High Court's Finding |
|---|---|
Belated filing of Dr. Nathan A Mehl's statement.
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The statement was filed along with post-hearing written submissions within the fifteen-day period prescribed by Rule 28(7) of the Patent Rules, 2003, and therefore cannot be considered belatedly filed.
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Dr. Nathan A Mehl is an employee of the appellant.
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The fact that Dr. Mehl is an employee cannot solely be a ground for non-consideration of his statement. Appellants involved in development and manufacturing would naturally have knowledgeable technical experts in their employment. The Learned Assistant Controller should have considered the statement on its merits.
|
Rejection of Dr. Mehl's statement by the European Patent Office (EPO).
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The decision of the EPO is not binding on the Indian Patent Office. Merely because the statement was not accepted by the EPO cannot be the basis for it not being considered by the Indian Patent Office. The grant or refusal of a patent in another jurisdiction is not a ground for its grant or refusal in India. The Learned Assistant Controller ought to have taken an independent view.
|
Scope of Dr. Nathan A Mehl's statement (inventive step/insufficiency).
|
The appellant's counsel submitted that the statement covers both lack of inventive step and insufficiency of disclosure. The respondent's counsel rebutted this. The Hon'ble High Court stated it was not required to go into this aspect, as it would have to be considered by the Learned Assistant Controller during the de novo consideration.
|
5. Conclusion of the Hon'ble High Court
The Hon’ble Mr. Justice Amit Bansal, in view of the findings, disposed of the appeal by remanding the matter back to the Learned Assistant Controller for a de novo consideration. The Hon’ble High Court issued the following specific directions:
- The Learned Assistant Controller shall consider the statement of Dr. Nathan A Mehl filed on behalf of the appellant on its merits.
- The Learned Assistant Controller shall grant a fresh hearing to the appellant by issuing a hearing notice.
- After the hearing, the Learned Assistant Controller shall pass a speaking order.
The Registry was directed to supply a copy of the order to the Office of the Controller General of Patents, Designs & Trade Marks for compliance. The decision was dated 11th March, 2025.
6. Key Takeaway for the Appellant
This judgment by the Hon’ble Delhi High Court offers crucial insights for patent applicants. Firstly, it underscores the importance of the timely submission of evidence, including expert statements, within the timeframe stipulated by patent rules, such as post-hearing submissions. Secondly, the decision clarifies that the mere fact of an expert being an employee of the applicant company does not automatically disqualify their statement from consideration; the merit of the content is paramount. Thirdly, it reaffirms the principle that patent offices in India must conduct independent assessments, and decisions from foreign patent offices, while potentially informative, are not binding. For Milliken and Company, this remand means a fresh opportunity to have their expert’s arguments fully considered by the Learned Assistant Controller, ensuring a more thorough examination of their patent application based on all submitted evidence.
Disclaimer: In compliance with the Bar Council of India guidelines, this article is intended for informational purposes only and does not constitute legal advice or a solicitation for legal services.
