Panasonic Appliances Refrigeration Devices Singapore v. Controller of Patents and Designs

JUDGMENT The present Appeal had been filed primarily filed on the ground that Page2 of 5 under the impugned order. The respondent without assigning any reasons whatsoever except to disclose the citations D1 & D2 of the prior art had rejected the application.

¶2Learned Senior Counsel had also contended that only the amendments that were sought to be made were discussed in holding that the patent does not have any inventive steps as required under Section 2(1)(ja) of the Act. The respondent had claimed that as only the Original Application does not have any inventive steps, the applicant had taken out an application for amendment which also do not make out any inventive steps for registration of the patent. The Authority had rejected both the amendments as well as the patent application. He would submit that recording the appellant's submissions and analysing the same on the prior art documents D1 and D2, the appellant had not made out the case for grant of registration and hence, the respondent had rightly rejected the claim.

¶3I have considered the submissions made by the learned counsels appearing on either side and perused the materials available on record.

¶4A perusal of the impugned order, wherein the decision of the respondent had been recorded would indicate that the respondent had recorded that the amendment is not in consonance with Section 57 & 59 of the Patents Act for it to be ordered. That apart, he had also in his decision referred to prior Page3 of 5 art document D1 and D2 in rejecting the amended claims. No reasons have been discussed as rightly pointed out by the learned Senior counsel with regard to the patent application. It is further to be noted that the prior art document under D2 was a vacuum cleaning machine whereas the invention is with regard to a refrigerant compressor which is not available in the D2 invention, which itself would show that there has been no proper application of mind on the side of the respondent.

¶5In such view of the matter, this Court is of the view that the order is liable to be interfered with and the appellant's application would have to be reconsidered.

¶6In view of the same, the impugned order dated 29.01.2021 rejecting the Grant of Patent is set aside and the matter is remanded for reconsideration on the following terms:

(a) In order to preclude the possibility of pre determination, an officer other than the officer who issued the impugned order shall undertake re-consideration.

(b) After providing a reasonable opportunity to the appellant, a reasoned decision shall be issued within a period of four months from the date of receipt of a copy of this order. Page4 of 5

(c) For the avoidance of doubt, it is made clear that no observation has been made on the merits of the patent application.

¶7On the above terms, this Appeal is disposed of. However, there shall be no order as to costs. 14-07-2026 Index: Yes/No Speaking/Non-speaking order GBA To Controller Of Patents And Designs Govt. of India, Patent Office, Intellectual Property Rights Building, GST Road, Guindy, Chennai - 600 032. CMA(PT)oNo.o56oofo2024 K.KUMARESHoBABU,oJ. GBA CMA(PT)oNo.o56oofo2024 14-07-2026 Page5oofo5

Page1 of 5 IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 14-07-2026 CORAM THE HON'BLE MR.JUSTICE K.KUMARESH BABU Panasonic Appliances Refrigeration Devices Singapore Rep. by its Authorized Representative Raghavan Ravindran Nair, I Bedok South Road - 469 267, Singapore. ..Appellant(s) Vs Controller Of Patents And Designs Govt. of India, Patent Office, Intellectual Property Rights Building, GST Road, Guindy, Chennai - 600 032. ..Respondent(s) PRAYER:- Civil Miscellaneous Appeal filed under Section 117A of the Patents Act, 1970 to set aside the Impugned Order dated 29.01.2021 rejecting the Grant of Patent and set aside the same and consequently direct Grant of the Patent in respect of the Appellant's Application No 1447/CHE/2012 and pass such other appropriate relief, order and/ or direction, which this Court may deem fit and proper. For Petitioner(s): Mr.P.V.Balasubramaniam Senior Counsel for M/S.BFS LEGAL For Respondent(s): Mr.A.R.Sakthivel, SPCGSC