01Facts
The Petitioner, a USA-based corporation, filed a National Phase Patent application in April 2008 for an invention titled "Ultra Supercritical Boiler Header Alloy and Method of Preparation"
p. 3Despite a request for examination in 2012, no action was taken until November 2020, when the Deputy Controller of Patents forwarded the application to the Department of Atomic Energy (DAE) under Section 20(6) of the Atomic Energy Act, 1962
p. 2On April 6, 2021, the DAE issued a brief order concluding that the invention related to atomic energy and directed that the application be refused under Section 4 of the Patents Act, 1970, read with Section 20(1) of the Atomic Energy Act, 1962
p. 3The Petitioner challenged these orders, contending they were unreasoned, suffered from non-application of mind, and deprived them of the opportunity to amend the specification
p. 302Issues
i.1. Whether the order passed by the Department of Atomic Energy refusing the patent application was sustainable in the absence of explicit reasons.
p. 11, 12ii.2. Whether the statutory scheme allows an applicant the opportunity to amend their specification to avoid a total rejection under the atomic energy bar.
p. 1303Law Applied
Section 4 of the Patents Act, 1970, which prohibits the grant of patents for inventions relating to atomic energy
p. 3Section 20 of the Atomic Energy Act, 1962, which defines "atomic energy" and empowers the Central Government to issue directions to the Controller of Patents
p. 2, 6Section 65 of the Patents Act, 1970, which provides for the revocation or amendment of specifications on directions from the Government in cases relating to atomic energy
p. 8, 9Administrative law principle that a "reasoned order" is the "heartbeat" of a legal decision, as affirmed in Ceres Intellectual Property Company Limited v. The Controller of Patents, Trade Marks and Designs & Ors.
p. 13, 14Provisions in the judgment · 8 · Linked ones open on LawLens
Patents Act, 1970 Section 4Section 7Section 12Section 13Section 14Section 65
Atomic Energy Act, 1962 Section 3Section 20
04Reasoning
The court observed that while Section 4 of the Patents Act and Section 20 of the Atomic Energy Act create a clear embargo on patenting inventions related to atomic energy, this power does not exempt the authority from the requirement of providing reasons
p. 11The Petitioner argued that their invention—a specific alloy for boiler headers—did not involve the release of atomic energy as defined under the Act
p. 12The court found that by issuing a non-speaking order, the Respondents prevented the Petitioner from understanding the basis of rejection and effectively denied them the statutory option under Section 65(2) to amend the specification to save the application from complete rejection
p. 12, 13The court emphasized that reasons are essential to replace subjectivity with objectivity and to allow an appellate or reviewing court to test the correctness of the decision
p. 1305Holding
The court held that the impugned orders were unsustainable due to a total absence of reasoning
p. 14It set aside the orders dated 18/11/2020 and 06/04/2021
p. 14The court directed Respondent No. 4 (DAE) to reconsider the Patent Application and the accompanying specifications afresh
p. 14The Respondents were ordered to pass a reasoned order in an expeditious manner, given the application has been pending since 2010
p. 15The Petitioner was also permitted to produce additional materials to support its claim that the invention does not fall under the atomic energy prohibition
p. 14Writ Petition made absolute
p. 15Original Court PDF
Huntington Alloys CorporationvsUnion Of India And 3 Ors
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