A patent application cannot be refused on grounds not specified in the hearing notice.

Glisten LLC appealed under Section 117A of the Patents Act, 1970 against the refusal of its Indian patent application for “Gemstone Coating and Methods of Making and Using the Same” on the ground that claims 1–17 lacked inventive step.

The FER had raised an inventive-step objection against claims 1–18 over documents D1 and D2.

However, the hearing notice confined its inventive-step objection to claim 18, based on alleged lack of support in the specification; Glisten then gave up claim 18 and proceeded with claims 1–17.

The Controller nevertheless refused the application on the basis that claims 1–17 were obvious over D1 in combination with D2.

1. Whether the Controller could refuse claims 1–17 for lack of inventive step when the hearing notice confined that objection to claim 18, without first notifying Glisten of the objection against claims 1–17 and providing an opportunity to respond.

2. Whether the Court was required to determine the substantive inventive-step merits of claims 1–17 in this appeal.

Sections 14 and 15 of the Patents Act, 1970 require the Controller, before disposing of an application, to communicate the gist of adverse objections and permit the applicant to be heard; the refusal power under Section 15 must be exercised consistently with that process.

Section 80 further requires an opportunity to be heard before the Controller exercises discretion adversely to an applicant.

These provisions embody audi alteram partem: notice must clearly and precisely identify the case to be met, and a decision on an unnotified ground violates natural justice.

The Court relied on Biecco Lawrie Ltd. v. State of West Bengal, Canara Bank v. V.K. Awasthy, Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, Agriboard International LLC v. Deputy Controller of Patents and Designs, Perkinelmer Health Sciences Inc. v. Controller of Patents, Proprietect L.P. v. Controller of Patents, and Phillip Morris Products S.A. v. Assistant Controller of Patents and Designs for the requirements of adequate notice, hearing, and reasoned decision-making.

In patent examination, the hearing notice identifies the objections that remain; an objection omitted from it, or a fresh ground, must be communicated and answered before an adverse order is made.

The hearing notice raised an inventive-step objection only against claim 18 and grounded it in the absence of working examples; it did not state that claims 1–17 remained obvious over D1 and D2 or explain how those documents rendered them obvious.

Glisten gave up claim 18 in response, while the Controller’s final order rejected claims 1–17 on the separate D1–D2 combination and found the wear-test evidence insufficient to establish an unexpected technical effect.

Because Glisten had not been notified of that case, its general written submissions could not substitute for specific notice, and it lost the opportunity to address the evidentiary deficiency identified in the final order.

The Court therefore resolved the appeal on procedural fairness and did not decide whether claims 1–17 substantively involved an inventive step.

It allowed the appeal, set aside the refusal order dated 23 January 2026, and restored the application to the Controller for fresh consideration in accordance with the Act and the Patents Rules, 2003.

All rights and contentions were left open, and the Court’s observations were not to influence the merits decision.