IPAB asks Controller General of Patents to hear Ericsson plea

Also asks Controller General of Patents to "afford proper opportunity" to the company

The Intellectual Property Appellate Board (IPAB) on Tuesday set aside the Controller General of Patents' order on a patent filed by Swedish communications technology and services company Ericsson. The IPAB also asked the Controller General of Patents to hear the matter afresh and "afford proper opportunity" to the company.

IPAB's order pertained to an appeal filed by Ericsson, against the Assistant Controller of Patents and Design's order refusing a particular patent to the company.

In 2004, Ericsson had filed an international patent application, under the patent cooperation treaty, for 'secure traffic redirection in a mobile communication system'. In this regard, the company filed an Indian national phase application with the Indian Patent Office in 2005.

In 2008, the patent office raised objections to this. It said a few claims didn't constitute an invention under Section 2(1) (j) of the Act, as the claims lacked novelty. It said some claims related to an independent invention, adding these weren't properly worded. Following this, the company made a few changes and, in 2009, held a discussion with an examiner, who maintained the claims didn't satisfy the requirements.

Several rounds of discussions were held between the company and the examiner concerned.

Tuesday's IPAB order said at one point an impugned order was issued during the prosecution; the company termed it "complete violation of the principles of natural justice and asked it to set it aside".

In 2010, the examiner indicated a part of the claims by the company related to computer programme per se and, therefore, wasn't an invention. After several rounds of arguments, the company sought time to consult the inventor and reply to the objections. It was claimed the patent office had agreed to this and granted time to file fresh submissions.

But even before fresh submissions could be filed, the Controller General of Patents passed the impugned order, without any explanation, and refused the application on the grounds the invention pertaining to claims one-seven was related to algorithm.

Ericsson said the order was passed without giving it opportunity to answer to the objections raised.

After hearing both the sides and going through the order, S Usha, vice-chairperson of IPAB, in her order, said, "We would rather not call it a finding, as it is only a statement." The company should have been given an opportunity to place its submissions, she said, adding it should have given an advance notice of the objections. The order said not doing so was "definitely" a violation of the principles of natural justice. "We think it fit to remand the matter back to the Controller to decide the matter afresh, in accordance of law."