Delhi High Court - Orders
Blackberry Limited vs Controller Of Patents And Designs on 6 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 91/2022
BLACKBERRY LIMITED ..... Appellant
Through: Mr. Pravin Anand & Mr. Sandip
Bhola, Advs. (M:9910237466)
versus
CONTROLLER OF PATENTS AND DESIGNS ..... Respondent
Through: Mr. Nitinjya Chaudhry, Sr. Panel
Counsel & Mr. Rahul Mourya, Adv.
(M. 9810103680)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 06.12.2023
1. This hearing has been done through hybrid mode.
2. The present appeal under Section 117A of the Patents Act, 1970 (hereinafter 'the Act') was originally filed by the Appellant- Blackberry Limited before the Intellectual Property Appellate Board (IPAB) in the year 2020. Thereafter, consequent upon the abolition of the IPAB, upon the enactment of the Tribunals Reforms Act, 2021, the present appeal stood transferred to this Court.
3. The present appeal arises out of the impugned order dated 30th November, 2018 by which the patent application number 8584/DELNP/2007 of the Applicant titled "SYSTEM AND METHOD FOR PREVENTING ACCESS TO DATA ON A COMPROMISED REMOTE DEVICE" was rejected. The said application was filed on 6th November, 2007 as a national phase application in India from the PCT application PCT/US2003/025795.
C.A.(COMM.IPD-PAT) 91/2022 Page 1 of 3This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:57:27
4. The stand of the patent office in the impugned order is that, the present patent application was a divisional application arising out of the parent application 875/DELNP/2005. The claims of the parent application was held to be identical to the current divisional application with some added features. The Controller's order is set out below:
"ANALYSIS AND FINDINGS :
Observation and submission of the applicant with respect to divisional status was carefully considered but found to be not persuasive. On scrutiny it was found that the claims of the parent application were related to "system and method for preventing access to data on a compromised remote device" and were related to a single subject matter. The parent application 875/DELNP/2005 was filed with 51 Claims. There was no plurality of subject-matter associated with the claims of the complete specification of the parent application and no objection was raised with respect to plurality of the invention by the office. The claims, with which the instant divisional application was filed, actually were the same of the parent application. Instead of system claims, the divisional application seeks protection for method claims. Further on scrutiny it is also found that in the time of FER reply the originally filed claims were amended and some new features have been added to the originally filed claims which were not there in the parent application.
Hence the claims which are same of as the claims of the parent application with some added features are attempted to be claimed in the so-called instant divisional application.
Applicant submitted that the claims of the divisional application are distinct from the parent application. However the so called distinct claims of the instant purported divisional application are the same claims of the parent application with some additional features.C.A.(COMM.IPD-PAT) 91/2022 Page 2 of 3
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:57:27 There was no plurality found in the claims of the parent application. Accordingly this instant divisional application number 8584/DELNP/2007 is infructuous and does not satisfy Section 16 of the Act and hence cannot be allowed as a divisional application. Now since the instant application is not allowable as a divisional application under Section 16 of the Act, hence discussions of other objections are not warranted.
6. On the above foregoing discussion. considering all facts and submissions made by the agent on behalf of the applicant, I hereby refuse to allow the instant application as a divisional application."
5. The term of this patent is the same as the parent application, which had a priority date of 9th August, 2002 and the international date of filing of 9th August, 2003. During the pendency of this appeal, the term of the patent application itself has come to an end. Thus, the Court has not gone into issues raised in this appeal.
6. In view of the fact that the life of the parent patent application has come to an end, this appeal is being disposed of. This would not be taken as an adjudication of any of the issues or a view expressed by this Court on the substantial aspects raised in the present case.
7. Further, the impugned order dated 30th November, 2018 shall also have no bearing on any other applications which have been filed by the Appellant/ Applicant.
8. The appeal is disposed of in these terms.
9. All pending applications are disposed of.
PRATHIBA M. SINGH, J.
DECEMBER 06, 2023/dj/bh C.A.(COMM.IPD-PAT) 91/2022 Page 3 of 3 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:57:28