Blank orders, “mechanical cut-paste” patent refusals, irrelevant prior art, patents granted after their term has nearly run — a run of Delhi High Court rulings has laid bare how unreasoned IPO/TMO decisions are harming innovators. Here’s the survey, and the reforms it demands.
The blank order
In Ravi Manchanda v. Registrar of Trademarks (3 August 2023), the Delhi HC flagged a critical error by a Senior Examiner: the appellant received a blank order in July 2018 and got no response when he asked for the grounds. After the IPAB (later abolished), the case moved to the IPD, Delhi High Court, which — noting the order’s absence — allowed the appeal and directed the Office to restore and dispose of the application expeditiously. The judge said the Court “ceases to be surprised” at such orders. It went viral for its absurdity, but it reflects real practitioner struggles.
Cut-paste patent refusals
- Blackberry Ltd v. Assistant Controller of Patents (April 2023) — the court criticised a “mechanical, cut-paste” refusal as arbitrary and lacking due diligence; the 2008 application was refused only in June 2020, with most of the patent term already expired — a serious disincentive to innovators.
- Dolby Intl v. Assistant Controller of Patents — a one-sentence reasoning in a largely incoherent, copy-pasted order with irrelevant diagrams; remanded for fresh consideration by a different officer.
- Dow Agrosciences LLC v. Controller of Patents — the cited prior art was completely irrelevant (including an uncorrected German-document reference); remanded for fresh hearing, stressing the Office’s duty to prevent such errors.
- Immunovative Therapies v. Controller of Patents — the judge imposed ₹15,000 costs on the Respondent for repeated adjournments and non-filing, warning that such treatment would “disincentivise persons from exercising their inventive faculties.”
The need for transparency
Patent prosecution is intricate and drawn-out; when an aggrieved party appeals, orders should contain comprehensive, relevant reasoning. Officers must recognise the gravity of granting or rejecting IP rights, which carry significant public value. The IPO/TMO should promote transparency and accountability through officer training and seamless communication with applicants to cut delays and misunderstandings.
Practical enforcement hurdles
A decade after India joined the Madrid Protocol, discrepancies with domestic law persist:
- national applicants can divide applications, but international applicants cannot;
- India prohibits transforming Madrid filings into national ones; and
- the IPO’s outdated software stops foreign applicants amending user claims, despite legal authority to.
Policy uncertainty
Parliament is contemplating amending the Trade Marks Act for the first time since 2010 — raising concerns about insufficient stakeholder consultation with IP counsel. Sudden changes without key input create uncertainty for practitioners already navigating a complicated system.
The takeaways
- Unreasoned orders get set aside — blank and cut-paste orders are being remanded and criticised.
- Delay harms innovators — patents refused near term-end defeat the purpose.
- Transparency and training are overdue — reasoned orders and better communication are essential.
- Structural hurdles remain — Madrid/division inconsistencies, outdated software, and consultation gaps.
Frequently asked questions
Can an IP office order be challenged for being a “cut-paste” order? Yes — the Delhi High Court has repeatedly set aside and remanded mechanical, copy-pasted or blank orders as arbitrary and lacking due diligence.
Why does delayed patent examination harm innovators? Because a patent granted after most of its 20-year term has expired offers little protection, disincentivising innovation — as criticised in the Blackberry case.
Can international (Madrid) applicants divide applications in India? No — national applicants can divide applications, but international applicants cannot, and Madrid filings can’t be transformed into national ones.
What reforms do these cases point to? Reasoned orders, officer training, transparency and accountability, better applicant communication, and stakeholder consultation on policy changes.
Legislation referred to
- The Patents Act, 1970
- The Trade Marks Act, 1999