Bombay High Court Sets Aside Non-Speaking Patent Refusal Order; Directs Fresh Consideration By Different Controller
The Bench held that the Patent Controller violated principles of natural justice by rejecting the application on the ground of lack of novelty even though the issue had not been raised in the hearing notice.
The Bombay High Court has set aside the refusal of a patent application after finding that the Controller of Patents passed an unreasoned, non-speaking order while rejecting the applicant’s claims. Observing that earlier judicial warnings against mechanical patent refusal orders appear to have gone unheeded, the Court remarked that the judicial lament over such orders has “fallen on deaf ears”.
The Bench held that the Patent Controller violated principles of natural justice by rejecting the application on the ground of lack of novelty even though the issue had not been raised in the hearing notice, thereby denying the applicant an opportunity to respond. The Court remanded the matter for fresh consideration by a different Controller, directing that the application be decided afresh in accordance with law while keeping all rights and contentions open.
Justice Arif S. Doctor categorically observed, “The Petitioner’s reliance on the decision of the Delhi High Court in the case of Huhtamaki OYJ v. Controller of Patents in which the Delhi High Court has lamented on the endemic problem of nonspeaking orders being passed by the Controller, is entirely apposite to the facts of the present case. Sadly, the Delhi High Court's lament seems to have fallen on deaf ears since the problem very much persists to date, as is evident from a perusal of the impugned order. The Controller has also clearly turned a blind eye to the following directions issued by the Delhi High Court to be followed when deciding a patent application”.
“Additionally, and crucially, Section 117A of the Patents Act specifically provides for an appeal against any order passed by the Registrar under Section 15. It is well settled that reasons form the heart and soul of an order, more so when such orders are appealable. It was therefore incumbent upon the Controller to have given independent reasons to support the rejection of the Petitioner’s Patent Application, which, as already noted above, the Controller has failed to do”, the Bench further noted.
Advocate Hiren Kamod appeared for the petitioner and Advocate Ashish Mehta appeared for the respondent.
The petitioner had applied for a patent relating to a single-use safety syringe designed to prevent reuse, thereby reducing infection risks caused by shared syringes. The invention incorporated a breakable plunger mechanism intended to lock and snap after injection, rendering the syringe unusable.
The Assistant Controller of Patents rejected the application on March 4, 2024 on the grounds of lack of novelty and inventive step.
Challenging the decision under Section 117A of the Patents Act, 1970, the company argued that the refusal order lacked reasoning and travelled beyond the scope of objections raised during the hearing.
The Court noted that the hearing notice issued by the Patent Office raised objections only regarding inventive step, but the final order rejected the application additionally on the ground of novelty.
The Court holding this impermissible, observed that the Controller had decided the application on a ground for which the applicant was never given an opportunity to respond, amounting to a clear breach of natural justice.
“Additionally, a perusal of the impugned order makes plain that it is entirely unreasoned. All that the Controller has done is simply reproduce the Petitioner’s claims and portions from the prior art cited and has gone on to conclude on the basis of the prior art that the Petitioner’s claims are not persuasive without in any manner explaining how the Petitioner’s amended claims were anticipated or rendered obvious from the prior art cited. The Controller has not provided any independent reasoning as to how the Petitioner’s invention lacks inventive steps or, for that matter, novelty. The Controller has simply reproduced the Petitioner’s claims and portions from the prior art cited and has concluded that the prior art renders the Petitioner’s claims unpersuasive. There is absolutely no reasoning and/or explanation as to how the Petitioner’s amended claims were anticipated or rendered obvious from the prior art cited”.
“Despite the fact that the issue of novelty was not raised in the hearing notice, the impugned order has rejected the Petitioner’s application both on the ground of novelty and inventive step. The Controller has therefore rejected the Petitioner's Application on a ground which was not raised in the hearing notice and therefore one to which the Petitioner did not have the opportunity to respond. The Controller has therefore clearly travelled beyond the hearing notice and proceeded to determine an issue to which the Petitioner was never given an opportunity to respond. Therefore, the Controller, in adjudicating upon the aspect of novelty without giving the Petitioner notice thereof, has acted in violation of the principles of natural justice”.
The Court clarified that no aspersions were being cast on the earlier officer and kept all rights and contentions of the parties open.
Cause Title: Medipack Global Ventures Private Limited v. Assistant Controller Of Patents and Designs [Neutral Citation: 2026:BHC-OS:7258]
Appearances:
Petitioner: Hiren Kamod, Abhishek Adke and Deepali Joshi, Priyank Gupta and Abhishek Shrivastava, Advocates.
Respondent: Ashish Mehta, Ashutosh Misra a/w. Raj Dani i/b. Ethus Legal Alliance, Advocates.