Facts
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"
Source reference: 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
Source reference: 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
Source reference: 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
Source reference: p. 3Issues
1. Whether the order passed by the Department of Atomic Energy refusing the patent application was sustainable in the absence of explicit reasons.
Source reference: p. 11, 122. Whether the statutory scheme allows an applicant the opportunity to amend their specification to avoid a total rejection under the atomic energy bar.
Source reference: p. 13Law Applied
Section 4 of the Patents Act, 1970, which prohibits the grant of patents for inventions relating to atomic energy
Source reference: 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
Source reference: 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
Source reference: 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.
Source reference: p. 13, 14Reasoning
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
Source reference: 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
Source reference: 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
Source reference: 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
Source reference: p. 13Holding
The court held that the impugned orders were unsustainable due to a total absence of reasoning
It set aside the orders dated 18/11/2020 and 06/04/2021
Source reference: p. 14The court directed Respondent No. 4 (DAE) to reconsider the Patent Application and the accompanying specifications afresh
Source reference: p. 14The Respondents were ordered to pass a reasoned order in an expeditious manner, given the application has been pending since 2010
Source reference: 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
Source reference: p. 14Writ Petition made absolute
Source reference: p. 15Original Court PDF
Huntington Alloys CorporationvsUnion Of India And 3 Ors
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