Qualyst Transporter Solutions Llc vs The Assistant Controller Of Patents Designs

2026:BHC-OS:13159
8-IA-1778-2026
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO. 1778 OF 2026
IN
COMMERCIAL MISCELLANEOUS PETITION NO. 61 OF 2025

Qualyst Transporter Solutions LLC ...Applicant/Petitioner
Versus
The Assistant Controller of Patents & Designs ....Respondent
________
Mr. Rashmin Khandekar a/w. Mr. Murlidhar Khadilkar, Mr. Anand Mohan, Mr.
Chinmay Page, Mr. Ashutosh Pawar i/b. Mr. Murlidhar Khadilkar for
Applicant. Mr. Yashodeep Deshmukh a/w. Mr. Rutwik Rao, Vaidehi Pradeep
i/b. Mrs. Minal Avinash Vaidya for Respondent.
________

CORAM : ARIF S. DOCTOR, J.
th
RESERVED ON : 8 MAY 2026
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PRONOUNCED ON : 15 JUNE 2026
JUDGMENT:
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1. This Court had, vide an Order dated 15 October 2025, disposed of the
captioned Miscellaneous Petition by passing the following order:
“ 1. Mr. Deshmukh, learned counsel appearing on behalf of the
Respondent has very fairly submitted that the impugned order is
unsustainable since questions have been raised for the first time in the
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impugned order to which the Petitioner did not have an opportunity to
deal with. This, he accepts would amount to a violation of the principle
of natural justice.
2. Hence, the order would have to be set aside and is accordingly set
aside. The matter is remanded back for fresh hearing. Let such fresh
hearing be concluded within a period of three months from a date of
which a copy of this order uploaded, given the fact that sufficient time
has already lapsed.
3. Let the matter be considered afresh before the independent controller.
4. In the event, it is not possible for any reason to conclude within three
months an application for extension may be made by the plaintiff.
”
the Order of Remand
For convenience, the above order is referred to as “ ”
and the parties are referred to as they appear in the captioned Commercial
Miscellaneous Petition.
2. Shorn of unnecessary details, it is the Applicant’s case that the Respondent
instead of only granting a fresh hearing as directed, is now seeking to
proceed de novo inter alia by raising fresh objections. It is in these
circumstances that the captioned Interim Application has been filed,
seeking the following reliefs:

a. Allow the present Application and issue appropriate directions for
carrying out the clarification to the Order as prayed for in the
present Application, thereby clarifying that the remand order dated
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October 15, 2025, requires that the fresh hearing be confined strictly
to objections forming part of the earlier record, and that no new
objections or prior art references shall be introduced at this stage;

b. Stay the operation and effect of the impugned hearing notice(s),
including the hearing scheduled on March 20, 2026, insofar as they
introduce fresh objections beyond the scope of the remand;

c. Direct the Respondent to proceed in the matter strictly in
accordance with the clarified scope of remand ordered by this
Hon’ble Court;

d. Pass such further orders and directions as deemed proper in the
facts and circumstances of the present case.

Submissions on behalf of the Petitioner:

3. Mr. Khandekar, Learned Counsel appearing on behalf of the Petitioner,
submitted at the outset that the Order of Remand was clear and
unambiguous and all that the Respondent was required to do was to grant
a fresh hearing and nothing more. He, however, submitted that instead of
doing so, the Respondent had sought to restart the patent examination
th
process by issuing a hearing notice dated 16 January 2026 which raised
entirely new objections. It was thus submitted that the Petitioner was
constrained to approach this Court by way of the present Application.
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4. Mr. Khandekar submitted that the facts leading up to the filing of the
Petition were of considerable relevance. He submitted that the Petitioner
had been prosecuting the patent application for almost ten years and that
the examination process under the Patents Act, 1970, had also concluded
and pointed out that the First Examination Report (“ FER ”) was issued on
nd
22 December 2020, after which the Petitioner filed a detailed response
st
thereto on 21 June 2021 together with substantive claim amendments. He
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then submitted that hearing notices were thereafter issued on 25 August
st
2021 and 21 September 2021, which made plain that the examination
stage was over.
5. Mr. Khandekar then placed particular emphasis on paragraphs one and two
of the Order of Remand and pointed out that the Respondent had expressly
accepted that the impugned order was unsustainable because certain
objections had been raised for the first time during the hearing without
affording the Petitioner an opportunity to respond to them. He submitted
that the Respondent had, in fact, conceded that there had been a violation
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of the principles of natural justice, and it was on this basis that the matter
was remanded for a fresh hearing.
6. Mr. Khandekar, submitted that the entire issue in question in the present
case turned on the true meaning and scope of the Order of Remand. He
submitted that once the impugned order had been set aside, the proceedings
were restored to the stage they were at when the impugned order was
passed, namely, the stage of hearing. Consequently, all that remained was
for the Petitioner to be given a fresh hearing in compliance with the
requirements of natural justice.
7. He further submitted that, at the time the Order of Remand was passed,
there was no suggestion from the Respondent that any further examination
was required, nor was any liberty sought or reserved to raise additional
objections or cite new prior art. He submitted that had such liberty been
sought or granted, it would have been noted in the Order of Remand. He
also pointed out that the direction requiring completion of the fresh hearing
within three months was itself a clear indication of the fact that the
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examination process had already concluded and that only the hearing
remained.
8. Mr. Khandekar then submitted that the Respondent had acted contrary to
both the letter and spirit of the Order of Remand and pointed out that
instead of convening a fresh hearing on the basis of the existing
th
examination record, the Respondent issued the hearing notice dated 16
January 2026, introducing entirely new objections and new prior art
documents D1 to D6, none of which had previously formed part of the
record. He submitted that this conduct on the part of the Respondent clearly
amounted to reopening the patent examination process, a stage which had
already concluded in 2021. He further submitted that the impropriety of the
Respondent’s conduct was compounded by the fact that the hearing notice,
which introduced the new objections, was issued on the very last day of the
three-month period within which the fresh hearing itself was directed to be
concluded.
9. Without prejudice to his submission that a plain reading of the Order of
Remand made its scope clear, Mr. Khandekar submitted that the
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Respondent’s conduct was also contrary to settled principles governing
remand proceedings. In support of his contention, he placed reliance upon
the decision of this Court in Shree Champalal Kothari Trust v. Rajhans
1
Cooperative Housing Society Ltd. , particularly paragraphs 17 to 19
thereof, to point out that a remand does not obliterate prior proceedings
and that, where the remand is limited in nature, the authority to whom the
matter was remanded was bound to act strictly within the confines of the
order of remand and that such authority cannot proceed on the footing that
the entire matter stands reopened or permit new pleadings and issues that
did not form part of the original dispute.
10.
He then also relied upon the judgment of the Hon’ble Supreme Court in
2
Shivshankara v. H.P. Vedavyasa Char to submit that an authority to
which a matter is remanded is bound to comply with the remand order in
its true spirit and that any departure therefrom is contrary to law and the
decision in the case of Laxman Bapu Berad v. Sudhakar Nanasaheb
3
Jawale , to point out that where a remand is for a specific purpose, the

1 th
[Bombay High Court] Order dated 11 November 2025 in Writ Petition No. 2110 of 2021 .
2
AIR 2023 13 SCC 1 .
3
1997 SCC OnLine Bom 319.
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authority has jurisdiction only to carry out those directions and cannot
reopen the entire case.
11. Mr. Khandekar further relied upon the decisions in Kiran Thakur v.
4 5
Krishan Lal and Smt. Ramabai v. Harbilas to submit that the jurisdiction
of the Court or Authority in question after an order of remand depends
entirely upon the terms of the order of remand and that no issue beyond
those limits can be reopened. He also relied upon the recent judgment of
6
this Court in Kapil Satish Phalke v. Sub-Divisional Officer, Koregaon to
submit that a remand cannot be utilised merely to redo what has already
been considered or to fill evidentiary lacunae where the record is otherwise
complete.
12. Mr. Khandekar submitted that these principles had also been applied in the
context of patent prosecution. In support of this submission, he relied upon
7
the decisions in Euro-Apex B.V. v. Controller of Patents and Designs ,
8
Grupo Petrotemex S.A. de C.V. v. Controller of Patents and Kamterter

4
[Himachal Pradesh High Court] Order in Cr. MMO No. 1127 of 2023 .
5
AIR 1997 Madhya Pradesh 90.
6 th
[Bombay High Court] Order dated 5 May 2025 in Writ Petition No. 5672 of 2025 .
7 th
[Bombay High Court] Order dated 11 March 2025 in COMMP No. 847 OF 2022 .
8
2023 SCC OnLine Del 2485.
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9
Products LLC v. Assistant Controller of Patents to contend that where
patent refusals are set aside and matters remanded, the remand
contemplates fresh consideration on the existing record and not a reopening
of examination through the introduction of fresh prior art.
13. Mr. Khandekar concluded by submitting that (i) a remand confines the
subordinate authority to the four corners of the remand order; (ii) a remand
cannot be used to revisit matters already concluded; (iii) in patent
proceedings, remands contemplate fresh consideration on the existing
record and not the introduction of fresh prior art; and (iv) by issuing the
hearing notice dated 16th January 2026 and subsequent notices introducing
entirely new prior art references, the Respondent had violated each of these
settled principles.
Submissions on behalf of the Respondent:
14. Mr. Deshmukh, Learned Counsel appearing on behalf of the Respondent,
submitted that the present Interim Application was wholly misconceived
and not maintainable in its present form. He submitted that the Petitioner

9 th
[Calcutta High Court] Order dated 26 June 2025 in IPDPTA No. 77 of 2023.
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under the guise of seeking a clarification of the Order of Remand, was in
reality seeking to introduce a restriction which the Order consciously did
not contain, namely, that upon remand the Controller would be precluded
from raising any further objections or citing additional prior art in relation
to Indian Patent Application No. 201727011198.
15. Mr. Deshmukh submitted that no such restriction was either expressly or
impliedly contained in the Order of Remand. He further contended that the
Application was premature and was, in substance, an attempt to avoid
dealing with the objections on merits before the Patent Office. According
to him, it was always open to the Petitioner to respond to the hearing
notices, without prejudice to its contentions regarding the permissible
scope of the remand, and thereafter invite a decision from the Controller.
If such decision were adverse, the Petitioner would have an adequate
remedy in accordance with law. He thus submitted that there was no
justification for the Petitioner to have moved this Court at this stage. He
submitted that the clarification and/or reliefs which the Petitioner was now
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seeking would effectively curtail the examination process of under the
Patents Act and Rules.
16. Mr. Deshmukh then submitted that upon a plaint reading of the Order of
Remand it was ex facie clear that it had been passed without any
adjudication on the merits of the rival contentions and solely on the basis
of the Respondents concession that the principles of natural justice had
been violated. He therefore submitted that the Order of Remand was
passed only on account of the breach of the principle of natural justice and
not upon any consideration of the merits of the objections or the
permissible future scope of examination.
17. He further submitted that the procedure adopted by the Respondent upon
remand was entirely consistent with the settled practice of the Indian Patent
Office, which was recognised both administratively and judicially. He
submitted that it was well settled that any further objections arising upon
consideration of the Applicant’s response to the FER, or upon a fresh
appreciation by the Controller, may be communicated through a hearing
notice together with an opportunity to respond. In support of his contention,
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he placed reliance upon Circular No. 4 of 2011, dated 21st September 2011,
issued by the Indian Patent Office, titled “Examination of Patent
Applications and Consideration of Report of Examiner by Controller”.

18. He then pointed out that clause (k) of the said Circular, specifically
provided that where objections remain outstanding or further objections
arise upon consideration of the Applicant’s response, such objections may
be communicated through a hearing notice, and there is no requirement to
issue a second examination report. He therefore submitted that objections
not specifically contained in the FER may validly be communicated
through a hearing notice, which is the recognised procedural mechanism
for doing so. He therefore submitted that the Petitioner’s contention that
the hearing notice dated 16th January 2026 was in substance a fresh FER
was misconceived and contrary to established Patent Office practice.
19. Mr. Deshmukh then placed reliance upon the decision of the Delhi High
10
Court in Perkinelmer Health Sciences Inc. v. Controller of Patents to
point out that the Court in that case had considered a refusal order founded

10 th
[Delhi High Court] Order dated 4 January 2023 in C.A.(COMM.IPD-PAT) No. 311 of 2022.
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upon a Section 3(f) objection raised orally for the first time at the hearing
without prior written notice. He pointed out that the Delhi High Court
extracted clauses (i) to (l) of the 2011 Circular and directed the Controller
to issue a fresh hearing notice setting out all objections. He submitted that
this decision clearly distinguished between objections raised orally for the
first time during a hearing, which is impermissible, and objections
communicated in advance through a written hearing notice, which is
expressly permissible.
20. Mr. Deshmukh then submitted that the Respondent had followed precisely
the course approved in the case of Perkinelmer by issuing the hearing
notice dated 16th January 2026 and setting out all objections and prior art
references in advance. The objections under Sections 2(1)(ja), 3(i),
10(4)(c) and 10(5), together with prior art references D1 to D6, had all been
disclosed in writing before the hearing, thereby fully satisfying the
requirements of natural justice. Learned Counsel pointed out that the
approach taken in the case of Perkinelmer was subsequently affirmed in
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11
Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents and Bayer
Pharm Aktiengesellschaft v. Controller General of Patents and
12
Designs .

21. Mr. Deshmukh, then in dealing with the authorities cited by the Petitioner,
submitted that the Petitioner had fundamentally misconstrued the nature of
jurisdiction involved since they dealt with the powers exercised by Civil
Courts in private disputes. He, however, pointed out that Patent prosecution
stands on an entirely different footing since the grant of a patent creates a
statutory monopoly enforceable against the world at large and therefore
involves rights in rem and significant public interest considerations. He
submitted that the Patent Office acts as a statutory gatekeeper charged with
ensuring that only inventions satisfying the requirements of the Patents Act
are granted protection and that which would apply to private civil disputes
cannot ipso facto be mechanically transplanted into the public law
framework that govern patent examination. Mr. Deshmukh thus submitted
that the reliance placed by the Petitioner upon Section 151 of the Code of

11
2022 SCC OnLine Del 4982.
12
2024 SCC OnLine Del 2044.
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Civil Procedure, 1908, and decisions concerning breach of natural justice
were misplaced and could not operate to restrict the Patent Office from
discharging its statutory obligations under Sections 12 to 15, 18 and 43 of
the Patents Act.
22. He further submitted that the decisions in Euro-Apex, Grupo Petrotemex
and Kamterter Products were distinguishable on facts since, in each of
those cases, the refusal orders had been set aside because they were
founded upon grounds that had never been communicated to the Applicant.
According to him, the infirmity identified in those cases was the absence
of proper notice and hearing. He submitted that none of these decisions
held that, upon remand, the Patent Office ceased to possess the statutory
authority to examine patentability in accordance with law.
23. Mr. Deshmukh further pointed out that even in Euro-Apex , the Division
Bench of this Court observed that material already on record before the
Controller could not be ignored merely because a pre-grant opposition had
subsequently been withdrawn. He submitted that this observation itself
demonstrated that the Controller’s obligation to consider relevant material
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in discharge of statutory duties continues notwithstanding procedural
developments.
24. Mr. Deshmukh submitted that the Order of Remand merely recorded that
certain questions had been raised for the first time without affording the
Petitioner an opportunity to respond and, on that basis, directed that the
matter be considered afresh by an independent Controller after granting a
fresh hearing. He submitted that the Order of Remand did not impose any
limitation on the future course of examination and was entirely silent as
regards the scope of the fresh hearing. According to him, this omission,
and the absence of any express fetter upon the Respondent, was of
considerable significance. He submitted that the Respondent had conceded
only the issue of breach of natural justice and, therefore, there was no
occasion for this Court to examine the merits of the record, the examination
history, or the specific objections raised, much less to define or restrict the
future scope of examination. He submitted that, applying the principle of
expressio unius est exclusio alterius , the absence of any restrictive
language in the Order of Remand was itself determinative of the fact that
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no limitation or restriction had been imposed upon the Respondent.
According to him, where a Court intends to circumscribe the scope of a
remand, it does so expressly. Since no such restriction had been
incorporated in the present case, the Petitioner could not invoke Section
151 of the Civil Procedure Code, 1908, to effectively rewrite the Order of
Remand by introducing limitations which the Court had consciously
chosen not to impose.
25. He then submitted that the entire Application proceeded on the erroneous
assumption that procedural doctrines developed in private inter partes
disputes could be imported into a statutory regime involving public interest
considerations. He submitted that the authorities relied upon by the
Petitioner, when properly understood, in fact supported the procedure
adopted by the Respondent.
26. Mr. Deshmukh accordingly submitted that the Application was devoid of
merit and deserved to be dismissed with costs, particularly in view of the
unnecessary multiplicity of proceedings occasioned by the Petitioner
instead of responding to the hearing notices on merits before the Controller.
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Submissions on behalf of the Petitioner in Rejoinder:
27.
Mr. Khandekar submitted that the Respondent’s reliance upon the Circular
st
dated 21 September 2011 was misplaced. He submitted that the issue
before this Court was not what a Controller may generally do under the
statute or the powers of the Controller in general but was confined to the
scope of the Order of Remand only. He submitted that since by the Order
of Remand, the Respondent was only required to grant a fresh hearing, the
scope was plainly clear and the Respondent could not, in the guise of the
general powers of the Controller or the said Circular, travel beyond the
plain letter and spirit of the Order of Remand.
28. He further submitted that the Respondent had itself admitted in paragraph
6 of its written submissions that the objections now sought to be raised
were fresh and had never previously formed part of the record. According
to him, this admission itself demonstrated that the Respondent was
attempting to enlarge the scope of the remand and effectively recommence
the examination process.
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29. As regards the decisions in Otsuka and Bayer , Mr. Khandekar submitted
that they were both distinguishable since neither of the said cases
concerned the interpretation of an existing order of remand. He then
submitted that the said decisions in fact supported the Petitioner’s case
since the order of remand made therein was expressly confined to
objections already raised and forming part of the record. He pointed out
that in Bayer , the remand order specifically directed de novo
“consideration”, whereas no such language was employed in the present
case, which was expressly confined to a “fresh hearing”.
30. Mr. Khandekar therefore submitted that, at the highest, the Respondent
could proceed only on the basis of objections already existing as of the date
of the Petition, namely, the objections contained in the FER and those
raised during the hearing held on 25th October 2021. He submitted that the
suggestion that the Order of Remand conferred a carte blanche authority
upon the Respondent to continuously raise fresh objections and
recommence examination proceedings in a matter where the Petitioner had
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succeeded was wholly misconceived and contrary to both the letter and
spirit of the Order of Remand.
Reasons and conclusions:
31. Having perused the Order of Remand and having considered the rival
contentions of Learned Counsel, as also the case law upon which reliance
has been placed, I find that the Application would have to be allowed. I say
so for the following reasons.
A. While there can be no dispute to the law laid down in PerkinElmer
Health Sciences Inc. , Otsuka Pharmaceutical Co. Ltd. and Bayer
Pharm Aktiengesellschaft upon which reliance was placed by the
Respondent, wherein it was held that the Controller possesses the
power to raise further objections during the course of examination
proceedings and that such objections must be communicated
through a hearing notice, as contemplated under Clause (k) of
Circular No. 4 of 2011. The question, which falls for consideration
in the present case, is whether those principles would apply in the
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facts of the present case, given the remit and scope of the Order of
Remand. In my view, they would not.
B. A plain reading of the Order of Remand makes it clear that the earlier
Order was set aside solely because certain questions had been raised
for the first time at the hearing without having been previously
communicated to the Petitioner, thereby depriving the Petitioner of
an opportunity to address them. The impugned Order thus stood
vitiated since there was a breach of the principles of natural justice,
to which the Respondent had specifically conceded, and the matter
was remanded for a fresh hearing. Significantly, when the Order of
Remand was passed, the Controller did not suggest that any further
objections were required or that the objections raised during the
hearing were justified, nor was any liberty to raise fresh objections
on remand even sought for. It was thus, and in this context, that the
matter was directed to be heard and decided afresh within three
months of the Order of Remand, as it was common ground that the
stage of examination was well over.
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C. While it is true that the Order of Remand records that the matter was
considered afresh before an independent Controller
to be “ ”, use of
such nomenclature must be read in the context of the facts in which
the Order of Remand was passed and cannot be read in isolation.
The remand was directed because the Petitioner had been denied an
opportunity of meeting certain objections; it was not founded on any
perceived deficiency in the examination process itself. Equally, and
as already noted in ( B ) above, there was no suggestion from the
Controller that the examination was incomplete, defective, or
otherwise required to be reopened. The direction that the matter be
“considered afresh” must therefore be understood as requiring a
fresh hearing after granting the Petitioner an opportunity to deal with
the objections already raised and not as starting the examination
process afresh or reopening the same. In the context of these facts,
which are really beyond the realm of dispute, I find the Petitioner's
reliance on the decisions in Shri Champalal Kothari Trust ,
Shivshankara and Laxman Bapu Berad to be entirely apposite.
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D. In the context of what has been noted above, it is also crucial to note
that the examination process had commenced as far back as 2020.
The FER was issued in December 2020, detailed responses and
amendments were filed in June 2021, and hearing notices followed
in August and September 2021. Also, as already noted in ( B ) and
( C ) above, when the Order of Remand was passed, there was not
even the slightest indication on the part of the Controller that further
examination was required or that additional prior art references or
fresh objections would have to be raised. On the contrary, the matter
proceeded on the basis that the only defect requiring correction was
the breach of the provisions of natural justice, and it was thus that
the Respondent accepted the direction that a fresh hearing be given
and the matter decided within three months.
E. I am conscious that patent prosecution stands on a somewhat
different footing from ordinary civil litigation and that
considerations of public interest necessarily inform the grant of
patent rights. However, that distinction does not materially assist the
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Respondent in the facts of the present case since the issue at hand,
as already noted in ( A ) above, is not whether the Controller, as a
matter of statutory power, may generally raise further objections
during prosecution but whether the Controller can now exceed and
go beyond the specific terms and limited purpose of the Order of
Remand. In light of what is already noted in ( B ) , ( C ) and ( D ) above,
the answer, in my view, in the facts of the present case must be in
the negative since the Controller’s jurisdiction on remand was
confined to curing the procedural defect identified in the Order of
Remand, i.e., by giving the Petitioner a fresh hearing. It did not
extend to reopening the examination process de novo by introducing
fresh objections or new prior art references that had admittedly never
been raised before. Therefore, the Petitioner’s reliance upon the
decisions in Euro-Apex B.V. , Grupo Petrotemex S.A. de C.V. and
Kamterter Products LLC is apposite. Furthermore, the Petitioner’s
reliance upon the decision of Kiran Thakur, Smt. Ramabai and
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Kapil Satish Phalke, wherein the scope of remand was discussed,
would squarely apply to the facts of the present case.
32. Hence, for the reasons set out in ( A ) to ( E ) above, I find that the present
Application deserves to be allowed. At the same time, it is clarified that
this Order shall not preclude the Respondent from elaborating upon,
clarifying, or further developing objections that already emerge from the
examination record and the prior art references forming part of the
proceedings as they stood when the Impugned Order was passed. What is
impermissible, however, having regard to the peculiar facts of the present
case and the limited scope of the Order of Remand, is the introduction of
entirely new prior art references or wholly new grounds of objection. To
permit such a course would, in effect, amount to reopening the examination
process itself, which is beyond the remit of the Order of Remand.
33. Given the inordinate amount of time already spent, the hearing is to be
completed and the order passed within a period of 8 weeks from the date
on which a copy of this order is uploaded.
34. The Application is disposed of on the above terms.
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8-IA-1778-2026
35. It is clarified that this Order has been passed only in the peculiar facts of
the present case and considering the Order of Remand which was earlier
passed.

[ARIF S. DOCTOR, J.]
37. After the Order was pronounced, Mr. Deshmukh, appearing on behalf of
the Respondent, sought a stay for a period of four weeks. This was strongly
opposed by Mr. Khandekar, who submitted that sufficient time had already
elapsed and that this Court had specifically clarified that the Order was
passed only in the peculiar facts of the present case. However, Mr.
Deshmukh submitted that he had instructions to press for a stay, submitting
that ramifications of this could be very wide. I am therefore inclined to
grant a stay as prayed. Hence, the effect of this order shall remain stayed
for a period of four weeks from today.

[ARIF S. DOCTOR, J.]
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