Full Judgment Text
2026:BHC-OS:9464-DB
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Salgaonkar
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
MANDIRA MILIND
SALGAONKAR
Digitally signed by MANDIRA
MILIND SALGAONKAR
Date: 2026.04.16 18:07:09 +0530
ORDINARY ORIGINAL CIVIL JURISDICTION
WRIT PETITION NO.2086 OF 2021
Huntington Alloys Corporation .. Petitioner
Versus
Union of India & Ors. .. Respondents
…
Mr.Rohan Kadam with Mr.Ishaan Paranjape, Ms.Jasmeet
Kaur, Ms.Fatima Ali and Ms.Vinayika Shahi i/b Anand and
Naik Co. for the Petitioner.
Mr.Anil C. Singh, ASG with Mr.Yashodeep Deshmukh,
Mr.Aditya Thakker, Ms.Apurva Gupte, Mr.Adarsh Vyas and
Mr.Rutwik Rao i/b Anusha P. Amin for the Respondent Nos.1 to
4.
CORAM: BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ.
th
DATE : 07 APRIL, 2026
...
JUDGMENT (PER BHARATI DANGRE, J.)
1. Rule. Rule is made returnable forthwith, by consent.
2. The Petitioner, a Corporation incorporated under the
laws of USA, is aggrieved by the order dated 18/11/2020
passed by the Deputy Controller of Patents and further order
dated 06/04/2021 passed by the Department of Atomic
Energy, thereby rejecting the Patent Application of the
Petitioner dated 09/11/2010.
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3. Heard learned counsel Mr.Rohan Kadam for the
Petitioner.
According to Mr.Kadam, the orders passed by the
Respondents suffer from lack of jurisdiction, non-application of
mind and being unreasoned orders, are liable to be quashed
and set aside.
The challenge to the impugned orders is raised in the
background facts that on 09/04/2008, the Petitioner filed an
National Phase Patent application (PCT/US2009/040019) and
it was allotted number IN’4211, which was published under
Section 11-A of the Patents Act, 1970 (for short, “Act of
1970”). The Petitioner filed the request for examination of
Application on 09/03/2012, but no steps were taken by the
Authority under Sections 12 to 14 of the Act of 1970.
On 18/11/2020, the Deputy Controller of Patents &
Designs, forwarded a communication to the Department of
Atomic Energy with respect to the Patent Application and
expressed its prima facie view that the Patent cannot be
granted to the applicants for the invention under Section 7 of
the Act of 1970.
The Application was, therefore, referred to the
Department of Atomic Energy under sub-section (6) of Section
20 of the Atomic Energy Act, 1962 (for short, “Act of 1962”)
for directions as to whether the invention is relating to Atomic
Energy and whether the said Application should be refused or
whether it can be processed.
The aforesaid reference resulted into an order passed on
06/04/2021 by the Department of Atomic Energy, stating
thus :-
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“I am directed to refer to your Letter No.PO/KOL/Sec-4/EF/19-
20(45) dated 18.11.2020 on the above subject and to state that the
matter has been carefully reviewed by the Government of India, in
the Department of Atomic Energy (DAE) with regard to the
provisions of sub-section (1) of Section 20 of Atomic Energy Act,
1962 read with Section 4 of the Patents Act, 1970. It is concluded
that the above invention does relate to Atomic Energy and hence
the application be refused.”
4. The above two orders are impugned in the present Writ
Petition.
Learned counsel Mr.Kadam, by inviting our attention to
the Act of 1962 would submit that Act of 1962 is a statue
providing for development, control and use of atomic energy
for the welfare of the people in India and for other peaceful
purposes and the Act has defined ‘atomic energy’ to mean
energy released from atomic nuclei as a result of any process,
including the fission and fusion processes. According to him,
by virtue of sub-clause (6) of Section 20, it is the Controller of
Patents and Designs, who is empowered to refer any
application to the Central Government for direction, as to
whether the invention is one relating to atomic energy and the
direction given by the Central Government is assigned finality.
He has also invited our attention to the Act of 1970 and, in
specific, Section 4 thereof, which provide that no Patent shall
be granted in respect of an invention relating to atomic energy
falling within sub-section (1) of Section 20 of the Act of 1962.
5. In light of the aforesaid statutory scheme, it is the
submission of Mr.Kadam that the Application of the Petitioner,
preferred under the Act of 1970 and the Patent Rules, 2003,
set out the specification of the invention titled as, “Ultra
Supercritical Boiler Header Alloy and Method of Preparation”.
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The specification set out the background of the invention by
submitting that the invention relate to an alloy suitable for a
header pipe in boiler applications and, more particularly, to a
high temperature, high strength nickel (Ni)-cobalt (Co)-
o o
Chromium (Cr) alloy for long-life service at 538 C to 816 C that
offers a combination of strength, ductility, stability, toughness
and fissure-free weldability as to render the alloy range
uniquely suitable for the header pipe in ultra-supercritical
boiler applications where essentially fissure-free joining of
boiler tubes to the header is critical. The specification also
contained the detailed description of the invention.
The publication under Section 11-A described the
invention in the name of the Petitioner- Huntington Alloys
Corporation, Huntington, West Virginia, U.S.A., with the name
of the inventor, being set out as Baker, Brian, A., Smith
Gaylord,D. and Gollihue, Ronald, D.
According to Mr.Kadam, though the Petitioner made
Application for examination as early as in 2012 to the
Controller of Patent and requested for it being examined
under Sections 12 and 13 of the Act, no steps were taken, but
all of a sudden, by passing the impugned orders, the Patent
Application has been rejected.
6. Learned Additional Solicitor General Mr.Singh,
representing the Respondents, by relying upon the affidavit
filed by the Assistant Controller of Patents, Patent Office,
would submit that the Application of the Petitioner was taken
up for examination and on the basis of the report of the
Examiner i.e. the concerned Controller, it was noticed that the
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Application of the Petitioner fall within the ambit of Section 4
of the Patents Act as the invention of the Petitioner consists of
Niobium and Tantalum compositions and, therefore, the
Controller deemed it appropriate to obtain necessary
directions from the Department of Atomic Energy.
7. Mr.Singh would submit that, Respondent No.4, on review
of the Application, concluded that the invention of the
Petitioner relate to atomic energy and, hence, it was refused.
According to him, reading of Section 4 of the Act of 1970 with
Section 20 of Act of 1962, would clearly reveal that the Central
Government i.e. the Department of Atomic Energy is the final
authority to decide whether a patent can be granted or not and
its decision is final.
Mr.Singh would submit that there is no scope to the
Patent Office to grant hearing to the Petitioner under Section
14 of the Act of 1970, as the final decision is to be taken by the
Department of Atomic Energy.
As far as the pendency of the Application for
considerable length of time is concerned, the affidavit has
stated that during the period prior to 2016, there was severe
shortage of Examiners in Patent Office and after induction of
considerable number of Examiners by the Government of
India, the pending Patent Applications were examined and
disposed of.
8. Mr.Singh would vehemently submit that Respondent
No.4 has followed due process of law, as provided in the Act of
1970 and when the Application is screened as to have
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relevance to atomic energy or defence of India, future course of
action of such application is governed by the concerned
authority like Department of Atomic Energy or DRDO, as the
case may be, and since the decision is finally taken, upon the
refusal of the Patent Application, there is no scope for any
judicial intervention.
In light of the prohibition contained in Section 4 of the
Act of 1970 read with Section 20 of the Act of 1962, it is not
permissible to grant patent for the inventions, which in the
opinion of the Central Government are useful for or relate to
the production, control, use or disposal of atomic energy or in
the process ensuring of safety in atomic energy operations.
The prohibition also apply to any invention of the nature
in respect of which an application for the grant of a patent has
been made to the Controller of Patents and Designs appointed
under the Indian Patents and Designs Act, 1911, before the
commencement of the Act of 1962 and which is pending at the
relevant time.
9. We have perused the scheme of the two enactments;
Atomic Energy Act, 1962 and Patents Act, 1970. The Central
Government is vested with the power to inspect any pending
patent application and specification and if it considers that the
invention relates to atomic energy, it is competent to issue
directions to the Controller of Patents and Designs to refuse
the application on that ground. Not only this, if any person
has made an invention, which he has reason to believe relates
to atomic energy, he is also duty bound to communicate the
same to the Central Government. Any person desiring to apply
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for a patent abroad for an invention relating to it or which he
has reason to believe that it relates to atomic energy, shall
obtain prior permission of the Central Government.
The whole purpose in imposition of the restriction is
evident from the statement of objects and reasons of the
Atomic Energy Act, 1962, which was enacted for the
development, control and use of atomic energy for the welfare
of the people of India and for other peaceful purposes. The
Central Government is exclusively empowered to produce,
develop, use and dispose of atomic energy and carry out
research into any matters connected therewith.
Section 3 of the Act of 1962 clothed the Central
Government with distinct powers relating to atomic energy
and for taking measures conducive to the production and
supply of electricity from atomic energy as well as use of
atomic energy for the welfare purpose. It is in the wake of this
power conferred on the Central Government, no invention,
which relate to the production, control, use or disposal of the
atomic energy is allowed to be patented and the Central
Government is conferred with the power to issue directions to
the Controller of Patents and Designs to refuse the Application
on that ground.
10. The Patents Act, 1970 has provided the procedure for
grant of Patents and Section 65 provided for Revocation of
patent or amendment of complete specification on directions
from Government in cases relating to atomic energy. The
Provision read thus :-
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"65. Revocation of patent or amendment of complete specification
on directions from Central Government in cases relating to atomic
energy.—
(1) Where at any time after acceptance of a complete specification,
the Central Government is satisfied that an application for a patent
or a patent is for an invention relating to atomic energy for which
no patent can be granted under sub-section (1) of section 20 of the
Atomic Energy Act, 1962 (33 of 1962), it may direct the Controller
to refuse to proceed further with the application or to revoke the
patent, as the case may be, and thereupon the Controller, after
giving notice to the applicant or, as the case may be, to the patentee
and every other person whose name has been entered in the
register as having an interest in the patent, and after giving them
an opportunity of being heard, may refuse to proceed further with
the application or may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may
allow the applicant for the patent or the patentee to amend the
complete specification in such manner as he considers necessary
instead of refusing to proceed with the application or revoking the
patent."
11. As per the above provision, where at any time, after
acceptance of complete specification, the Central Government
is satisfied that the patent is for an invention relating to
atomic energy for which no patent can be granted, it may
direct the Controller to refuse to proceed further with the
application or to revoke the patent, and thereafter, the
Controller after giving notice to the applicant, or as the case
may be, to the patentee and every other person whose name
has been entered in the Register and after giving an
opportunity of being heard, may refuse to proceed with the
application or may revoke the patent. By virtue of sub-section
(2), it was permissible for the Controller to allow the applicant
for the patent or the patentee to amend the complete
specification in such manner as he considers necessary
instead of refusing to proceed with the application or revoking
the patent.
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The said provision was substituted by the Patents
(Amendment) Act, 2005 w.e.f. 01/01/2005 and the provision
reads thus :-
“65. Revocation of patent or amendment of complete
specification on directions from Government in cases relating to
atomic energy.-(1) Where at any time after grant of a patent, the
Central Government is satisfied that a patent is for an invention
relating to atomic energy for which no patent can be granted under
sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of
1962), it may direct the Controller to revoke the patent, and
thereupon the Controller, after giving notice, to the patentee and
every other person whose name has been entered in the register as
having an interest in the patent, and after giving them an
opportunity of being heard, may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may
allow the patentee to amend the complete specification in such
manner as he considers necessary instead of revoking the patent.”
12. In the wake of the amendment in Section 65, according
to Mr.Kadam, the power which is now available under the
provision is restricted to revocation of the patent and the
option of non-consideration of the application is not available.
However, we do not find merit in the said contention, as it can
be seen that when Section 65 was introduced in the Act of
1970, in the backdrop of Act of 1962, authorising the Central
Government to refuse any application for patent for an
invention relating to atomic energy, the applications for patent
involving atomic energy were awaiting the decision, and since,
in the wake of Section 20 of the Act of 1962, the patent could
not be granted, the Controller was authorised to refuse to
proceed with the application, if pending or revoke the patent, if
already granted. However, by the year 2005, in the wake of
the provision contained in Section 20 of the Act of 1962, with
the burden being cast on a person making an invention in
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relation to atomic energy to communicate it to the State
Government or seek its permission, there were no applications
pending and the provision was, therefore, restricted to
revocation of grant of patent. But, in no case, the provision
can be construed to the effect that the patent application shall
be granted first and then it shall be revoked, if it relate to
atomic energy in the wake of the bar imposed under sub-
section (1) of Section 20 of the Act of 1962.
13. In both the cases, what is noted is the permissibility of
allowing the patentee to amend the complete specification in
such a manner as he considers necessary instead of revocation
of patent, if it is granted. Since the Application of the
Petitioner has been kept pending since 2010, there is no
question of its revocation, but on consideration of application,
it is permissible for the Central Government to issue direction
to the Controller to refuse to proceed the same, if it relates to
atomic energy, but to save such an application from its non-
consideration on the said ground, it is open for the
patentee/applicant to amend the specification, so as to avoid
its invention involving atomic energy, resulting into its
complete rejection.
14. In the light of the statutory scheme involving atomic
energy, no patent can be granted and Section 4 of the Act of
1970 clearly imposes an embargo in grant of patent in respect
of an invention relating to atomic energy falling within sub-
section (1) of Section 20 of the Act of 1962.
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One significant aspect to which our attention is invited is
the enactment of “The Sustainable Harnessing And
Advancement of Nuclear Energy For Transforming India Act,
2025”, an Act of Parliament providing for promotion and
development of nuclear energy, including its application in
healthcare, food, water, agriculture, industry, research,
environment for the welfare of the people of India and
providing for robust regulatory framework for its safe and
secure utilisation. The statute being enacted in the
background of India having achieved self-reliant capability in
production and use of nuclear energy and recognising the
potential, it offers towards rapidly meeting the ever increasing
energy needs of the country through further research and
development. Under said enactment, the absolute embargo to
consider grant of patent has been relaxed by making it
permissible to encourage invention involving atomic energy
for welfare purposes. However, we are informed that the said
Act is not brought into force yet.
15. When we have perused the impugned order passed by
Respondent No.4, confirming the view expressed by
Respondent No.3, that invention of the Petitioner relate to
atomic energy and, thereby refusing the Application for grant
of patent, what immediately struck us is, the absence of
reasons in the said order.
‘Atomic energy’, as per the Act of 1962, is the energy
released from atomic nuclei as a result of any process,
including the fission and fusion processes and when the
Central Government is conferred with the power to refuse any
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patent for invention, which involve atomic energy, in our view,
when the applicant has preferred his application with
specification and it is the contention of Mr.Kadam that the
invention revolves around an alloy which is suitable for a
header pipe in boiler applications and invention titled as,
“Ultra Supercritical Boiler Header Alloy and Method of
Preparation” in no way amount to release of atomic energy, as
the specification has set out the summary of the invention and
the detailed description of the invention. According to
Mr.Kadam, the invention is only related to any alloy which is
suitable for Ultra Supercritical Boiler applications and it no
way results into release of any atomic energy.
Though in the reply affidavit it is faintly suggested that
the invention involves release of atomic energy, we do not find
any reasoning contained in the impugned order, as according
to us, the Petitioner whose Application/Invention is rejected, is
entitled to know the basis of rejection, as in the specification
furnished in regard to the invention, the stand of the
Petitioner is, it is not even remotely relate to atomic energy
and if the reasons were furnished to the Petitioner, it was open
for it to adopt the procedure under Section 65(2) of the Act of
1970 and the option of amending the specification was
available to it.
However, in the wake of the impugned order, this
opportunity is denied to the Petitioner and the Petitioner is not
even communicated the reasons, why its Application is
rejected.
It is trite position in law that a reasoned order is a
judicial decision providing explicit reasons and justification for
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its conclusion, which ensures transparency, accountability and
contributes to upholding the rule of law. The reasons of a
decision are considered to be its ‘heartbeat’ replacing
subjectivity with objectivity and ensuring that the authority
passing the order has applied its mind to the facts placed
before it. A non-speaking or unreasoned order, hinders the
Appellate Court’s ability to test the correctness. The situation
is not rare, when the unreasoned orders passed by
Administrative/Judicial Authorities are frowned upon and the
procedure of fairness definitely can be ensured, if the order
passed is supported by reasons, disclosing the mind of the
authority taking such a decision.
Though Mr.Singh has attempted to canvass before us
that the power is specifically vested in the Central Government
to refuse an patent application, if it involves atomic energy, in
our view, we see no difficulty as to why the reasons cannot be
disclosed.
A process, which relates in release of atomic energy, is
known to the experts with the Central Government, but when
a person seek patent for his invention, according to us, he
must be made aware of the reasons why his patent cannot be
granted. In addition, as indicated under sub-section (2) of
Section 65, upon the reasons being communicated to the
applicant, it is open for him to vary his invention, so as to
avoid rejection of application.
16. We find support to our view by the order passed in Writ
Petition No.2257 of 2018 (Ceres Intellectual Property
Company Limited Vs. The Controller of Patents, Trade Marks
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and Designs & Ors.) dated 06/10/2022 , when the National
Phase Application filed by the petitioner at the Indian Patent
Office in respect of method for deposition of ceramic films for
the use in manufacture of solid oxide fuel cells was rejected by
an unreasoned order, by stating that it was in the wake of the
directions issued by the Department of Atomic Energy and
Section 4 of the Patents Act, 1970. The Division Bench in the
background facts observed thus :-
“6. From perusal of the impugned order, it is manifest that the
application has been rejected only on the ground that the directions
are issued by the Department of Atomic Energy and in view of the
said directions, the application is rejected. There cannot be a
manner of doubt that if the application of patent engulfs within its
fold, the circumstances and/or inventions as detailed in Section
20(1) of the year 1962, the Authority has got powers to reject the
patent application. However, the same is to be borne out from the
reasons in the order.
7. In light of the above, as the impugned order is dehors the
reasons, the impugned order is set aside. The Respondent No.1 shall
reconsider the application of the Petitioner for issuance of patent on
its own merits in accordance with law and shall decide it a fresh
expeditiously.
17. In the wake of the aforesaid, since we find that in the
case before us, the order refusing the Patent Application is
sans any reason, the same cannot be sustained and liable to be
set aside. However, at the same time, on setting aside the
order, we permit consideration of the Patent Application of the
Petitioner alongwith the specification to be considered by the
Respondent No.4, but by passing a reasoned order. Though
Mr.Kadam do not insist for a personal hearing, we deem it
appropriate to permit the Applicant to produce such material
in addition to the specifications, which are already submitted
to Respondent No.3, for consideration of its Patent Application
dated 09/11/2010, captioned as invention, “Ultra Supercritical
Boiler Header Alloy and Method of Preparation”.
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Since the Application of the Petitioner is pending since
2010, we expect Respondent Nos.3 and 4 to process the same
in an expeditious manner.
18. With these directions, the Writ Petition is made absolute.
(MANJUSHA DESHPANDE, J.) (BHARATI DANGRE, J.)
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