AIA Engineering Ltd v Controller of Patents (2006)

Summary

“A patent application bearing number 2769/DEL/1997 was filed by one Hubert Francois on 29-09-1997.” (para 1) “Respondent No. 2 is stated to have requested the Controller of Patents, vide letter dated 02-09-2005, to carry out certain corrections/clerical errors in the claims of the patent. The same are stated to have been allowed by the Assistant Controller on 06-09-2005. Patent No. 197257 was granted in favor of Respondent No. 2 on 2-12-2005.” (para 2) The petitioner’s review application sought to recall that order “on the ground that such amendments were not clerical errors and the grant of such amendments amounted to fraud on the patent office and on the public at large. The amendments questioned by the petitioner were the substitution of the words ‘homogenous phase’ instead of ‘homogenous Solid Solution’ in Claim 1 ; substitution of ‘pad’ in place of ‘roller’ in Claim 1 and other claims; and the substitution of ‘by volume’ in place of ‘by weight’ in claim 4.” (para 3) After a first round, a “learned Single Judge directed the Assistant Controller to decide the application of the petitioner dated 18-01-2006 in accordance with law after granting Respondent No. 2 (the petitioner in the said writ petitions) and the petitioner an opportunity of being heard.” (para 8) “On 19-07-2006, the Assistant Controller heard the parties and in terms of order dated 28-07-2006, rejected the review application of the petitioner.” (para 9)

The Court held that “the nature and scope of the impugned order was required to be in conformity with the directions passed in Writ Petition (Civil) 7841- 2/2006 decided on 10.05.2006” (para 31), and that the technical defects in the review application “could easily have been directed to be cured and ought not to have been the grounds to reject the application” (para 34). “It is trite to say that while purporting to exercise powers under Section 78 of the said Act, there cannot be any amendment of the application as in that eventuality the procedure of Section 57 r/w Section 59 of the said Act must be followed.” (para 41) It held that “the impugned order cannot be sustained as it suffers from a patent error and improper exercise of jurisdiction by the Assistant Controller and is liable to be set aside and the matter remanded back to respondent No. 1 for adjudication on merits in accordance with the letter and spirit of the order dated 10.05.2006.” (para 42) “Petition is allowed leaving the parties to bear their own costs.” (para 43)

What the court decided

1. The scope of the remand. “In my considered view the nature and scope of the impugned order was required to be in conformity with the directions passed in Writ Petition (Civil) 7841- 2/2006 decided on 10.05.2006 filed by respondent No.2 against respondent No.1.” “The primary reason for passing the order, as apparent from the order itself, is the failure of principles of audi alteram partem by the Assistant Controller whereby the petitioner did not get an opportunity of being heard.” (para 31)
2. Procedure. Defects of form and fee. “There are five reasons why a finding has been arrived at against the petitioner The first three are technical defects in the application filed by the petitioner about the fee to be paid and the prescribed mode of the application. It is gainsay to state that such defects could easily have been directed to be cured and ought not to have been the grounds to reject the application, more so in view of the directions passed on 10.05.2006. The object and spirit of the order was to see adjudication of the application on merits.” (paras 9, 34)
3. Procedure. The consent order. “In respect of the fourth aspect, it is to be noticed that the order passed on 10.05.2006 was a consent order and it had been agreed to by respondent No. 2 that the application would be considered on merits. There was of course the second aspect about whether such an application would be maintainable in view of the pendency of the suit. Thus this aspect also could not come in the way of adjudication on merits of the application.” (para 34)
4. An order on the file. “In this behalf, the concerned authority/respondent No. 1 has been approbating and reprobating taking conflicting stands. Initially a stand was taken that there was no order dated 06.09.2005. Thereafter this stand was modified to state that no formal orders were passed on 06.09.2005. The fact, however, remains that there was some order passed on the file whether formal or not. The result is that there has actually been no real adjudication of the merits in pursuance to the order passed on 10.05.2006.” (para 35)
5. Section 78 and section 57. Counsel for the petitioner “pointed out that Section 78 which deals with power of Controller to correct clerical errors is distinct from the powers to be exercised under Section 57 of the said Act.” “The Assistant Controller had exercised his powers purportedly under Section 78 of the said Act and thus the proviso to Section 57 of the said Act would have no application.” (para 37) The Court held: “This aspect is clear from the reading of the said provisions” (paras 37–38)
6. The Controller’s own stand. “An important aspect in the present proceedings is the stand taken by the Controller of Patents himself. It is the stand now taken in the affidavit that on scrutiny, it has been found that the amendments could not be categorized really as clerical errors.” (para 39) “The amendments were carried out after the original application was published in the Patent Journal.” (paras 39–40)
7. No amendment under section 78. “It is trite to say that while purporting to exercise powers under Section 78 of the said Act, there cannot be any amendment of the application as in that eventuality the procedure of Section 57 r/w Section 59 of the said Act must be followed. There appears to be also absence of any power of the Controller to make any amendment suo motu.” (para 41)
8. The plea of mistranslation. “The scrutiny has to take place whether really speaking the plea of respondent No. 2 that it was a mistake in translation can be accepted by finding out the correct translation as compared to the original.” (para 41)
9. Procedure. Set aside and remanded. “In view of the aforesaid position, I am of the considered view that the impugned order cannot be sustained as it suffers from a patent error and improper exercise of jurisdiction by the Assistant Controller and is liable to be set aside and the matter remanded back to respondent No. 1 for adjudication on merits in accordance with the letter and spirit of the order dated 10.05.2006.” (para 42) “Petition is allowed leaving the parties to bear their own costs.” (paras 42–43)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.