Delhi High Court pulls up patent office for "cut-paste" order rejecting BlackBerry's application

The Delhi High Court recently pulled up the Assistant Controller of Patents and Designs for rejecting a patent application filed by BlackBerry Limited without reasoning through a "mechanical, template and cut-and-paste order." [Blackberry Limited vs Assistant Controller of Patents and Designs]

Justice Sanjeev Narula said that the controller should have provided reasons to support the conclusion in order to adhere to the principles of natural justice.

The Court emphasized that without proper reasoning in the Assistant Controller's orders, it may be difficult for the applicant to identify the grounds for appeal.

"The Controller ought to have disclosed reasons to support his conclusion. Reasoning through a speaking order is a vital aspect of the principles of natural justice and is of utmost importance, which needs to be underscored. If the patent office’s orders lack proper reasoning, it may be difficult for the applicant to identify the grounds for appeal. The legal proposition that an order of such kind should be supported by reasons, needs no reiteration," the Court said.

BlackBerry had filed a patent application in 2008 for an invention that facilitates the selection of small text on touch-sensitive screen devices by zooming in on the text.

The application was rejected by the Assistant Controller in 2020 under section 15 of the Patents Act. Hence, BlackBerry moved the Delhi High Court in appeal.

The High Court noted that in one of the paragraphs of the Assistant Controller's order, the reasons for dismissing the application were merely a word-for-word replication of BlackBerry's claims and therefore no reasoning was discernible from the paragraph.

In the next paragraph of the assailed order, the Court found that it was stated that the requirement of section 3(k) of the Patents Act was not complied with.

The Court said that it was unable to comprehend how this conclusion was drawn.

"The above lines are the only shred of rationale in the impugned order. The Court is therefore unable to comprehend as to how this conclusion has been drawn. Simply remarking that subject invention is not patentable being a mathematical or business method, a computer programme per se, or an algorithm is not sufficient," it stated.

The Court observed that the order contained details of the invention, claims made therein and the proceedings, but the crux of the issue was the lack of reasoning supporting the final decision, a task at which the Assistant Controller had completely fallen short.

"This makes the decision arbitrary, suggesting a subjective determination without any objective criteria. Such kind of mechanical, template and cut-and-paste orders cannot sustain and must be stridently discouraged," it added.

The Court highlighted that in a recent decision of the Delhi High Court in Dolby International AB v. The Assistant Controller of Patents and Designs, Justice C Hari Shankar was unable to identify the reasoning in the order assailed in the case and had observed that concerned officers of the Controller of Patents and Designs office must bear in mind that question of grant and rejection of a patent is a serious matter.

These words, the Court said, must resonate with the Patent Controller’s officers and they must practice due application of mind while rendering decisions.

"Well-articulated reasons in such orders would demonstrate that the decision has been made with proper consideration and allows for more effective judicial review, if necessary," it observed.

Holding that the assailed order failed to satisfy the basic requirements of any order adjudicating on patentability of an invention, the Court determined it was not in a position to examine it on merits and accordingly, quashed it and sent the matter back to the Assistant General for reconsideration before another officer.

[Read Order]