Patents Act| Controller Must Refer Patent Application For Examination And Afford Hearing If Examiner’s Report Is Adverse: Bombay High Court

The Court was hearing a Commercial Appeal arising out of proceedings under Section 117-A of the Patents Act, 1970, challenging the decision of the learned Single Judge, which had upheld the refusal of a patent application by the Controller.

A Division Bench comprising Justice Bharati Dangre and Justice Manjusha Deshpande observed: Under the Patents Act, the Controller is the key person, as whenever an application for patent is preferred and a request for examination is made, it shall be referred at the earliest by the Controller to an Examiner for making a report and the Controller, under Section 14, on receipt of the said report, before proceeding to dispose of the application is entitled to follow the procedure prescribed, i.e., affording an opportunity to the applicant to be heard if the report of examiner is adverse to the applicant or requires an amendment”.

Advocate Pranshul Dube appeared for the appellants, while Advocate Ashish Mehta appeared for the respondents. Senior Advocate Venkatesh Dhond assisted the Court as Amicus.

Background

The appellants had filed a patent application titled “Thread Type Tamper Evident Security Seal,” which was subjected to pre-grant opposition under Section 25(1) of the Patents Act, 1970. The Assistant Controller of Patents and Designs refused the patent application on grounds that included a lack of novelty and inventive step.

The appellants challenged the refusal by filing an appeal under Section 117-A of the Patents Act before the High Court. The matter was entertained by the Commercial Division and registered as a Commercial Miscellaneous Petition, which came to be dismissed by the learned Single Judge.

It was contended by the appellants that the statutory procedure under the Patents Act had not been properly followed and that the refusal order did not adequately consider the submissions and material placed on record.

The respondents supported the impugned order, contending that the Controller had acted within the framework of the Act and had followed due procedure in rejecting the application.

Court’s Observation

The Bombay High Court examined the statutory scheme governing patent examination under the Patents Act, 1970, particularly the role of the Controller under Sections 12, 13, and 14.

The Court noted: "the Assistant Controller under Section 77 of the Patents Act is clothed with the powers of Civil Court while trying a Suit under the Code of Civil Procedure, in the wake of the proceedings before him and by exercise of this power, the Controller is empowered to hear any parties to the proceedings or to give any such party an opportunity to be heard in regards to the application, which is filed for grant of patent or for amendment of a specification before exercising the discretion adverse to the applicant".

The Court further underscored that "... looking at the scheme of Chapter XV, including Section 77 read along with Section 79 and 80, the evidence before the Controller is permitted to be given on affidavit, in absence of his directions to the contrary but where the controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be cross-examined from the contents of the affidavit".

In light of the specific powers conferred on the Controller, the Court held that once a patent application is filed and a request for examination is made, the Controller is under an obligation to refer the application to an Examiner for preparation of a report.

The Court emphasised that the Examiner’s report forms the basis for further action by the Controller and that the procedure prescribed under Section 14 is required to be followed before any adverse decision is taken. It held that where the report is adverse or requires amendment, the applicant must be allowed to be heard.

The Court also clarified that the decision rendered by the Controller, being determinative of the rights of the applicant under the Act, constitutes an order within the meaning of Section 117-A and is therefore appealable before the High Court.

The Court observed: “With the nature of extensive powers vested on the Controller, which includes the specific power in cases of anticipation as contemplated in Section 18 as well as the power conferred on him in case of potential infringement as well as the power to make orders regarding substitution of the applicants, in our view the Controller of Patents play a significant role and therefore, in the whole process of grant or refusal of patent and he is conferred with the powers of the Civil Court, as regards the application for grant of patent, he is authority to take a decision, which is appealable before the High Court”.

It was further observed that when such an appeal is entertained by the Commercial Division of the High Court, it does not alter the nature of the proceedings, which continue to remain appellate in character under the Patents Act.

“Section 117-A of the Patents Act, clearly provide for Appeals to the High Court against the decision of the Controller and when such dispute falls within the purview of ‘commercial dispute’ and is entertained by the Commercial Division of the High Court, then its scope is not only restricted as proceedings of first instance, but it is accepted as in the form in which it comes i.e. in form of an Appeal under Section 117-A of the Act of 1970”, the Bench further clarified.

Conclusion

The High Court reiterated that the statutory scheme under the Patents Act, 1970, mandates strict adherence to the procedure of examination and consideration of the Examiner’s report, and that an applicant must be afforded an opportunity of hearing under Section 14 before any adverse decision is taken.

Accordingly, the Court upheld the decision of the learned Single Judge, affirming the Controller's refusal of the patent application and dismissed the appeal as not maintainable.

Cause Title: Vishal Prafulsingh Solanke & Anr. v. Controller of Patents and Designs & Ors. (Neutral Citation: 2026:BHC-OS:7027-DB)

Appearances

Appellants: Pranshul Dube, Advocate; Asma Nadaf, Advocate; Maithri Porwal, Advocate

Respondents: Ashish Mehta & Ashutosh Mishra, Advocates; Senior Advocate Venkatesh Dhond (Amicus).

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