Patent Controllers Must Decide All Objections in Hearing Notices to Avoid Jurisdictional Delays and Injustice.

The Appellant filed an Indian patent application (610/DELNP/2015) on January 23, 2015, as a National Phase Application.

The Respondent (Patent Office) issued a First Examination Report (FER) on May 13, 2019, raising objections regarding lack of inventive step, sufficiency of disclosure, and clarity.

Subsequent hearing notices raised further objections under Section 2(1)(j) (novelty), Section 3(d) (non-patentability), and Section 10(4) (clarity and sufficiency).

The Assistant Controller refused the application via an order dated July 14, 2022, solely on the grounds of Section 10(4)(a) and 10(4)(c), explicitly stating that a decision on novelty and inventive step was "not required to be taken".

The Appellant challenged this order, arguing that the Controller failed to examine all objections raised in the hearing notice.

1. Whether the Controller of Patents is required to adjudicate upon all objections raised in a hearing notice even if the application is found non-patentable on a single technical ground.

2. Whether the failure to address objections regarding novelty and inventive step warrants a remand for fresh consideration.

The court primarily applied Section 117A(2) of the Patents Act, 1970, regarding appeals.

Statutory interpretation of Section 10(4)(a) and (c) concerning the sufficiency of description and scope of claims.

The procedural doctrine established in Adama Makhteshim Ltd. v. The Controller of Patents and Medilabo RFP Inc v. The Controller of Patents, which mandates that Controllers should examine all grounds of objection to avoid repetitive remands and to protect the limited 20-year term of a patent.

The court reasoned that a patent application must be considered as a whole.

The court observed that since patents have a strictly limited shelf life of 20 years, a piecemeal adjudication—where a Controller decides only one objection and leaves others untouched—leads to "injustice and unfairness" by forcing applicants into successive rounds of litigation.

The court compared the Controller’s duty to that of a Civil Court, which must decide all framed issues to ensure the Appellate Court has a complete record for review.

The court noted its own limitations as an appellate body; since it is not a "Person Skilled in the Art" (PSITA), it cannot arrogate to itself the power to decide technical issues like novelty or inventive step for the first time if the Controller has failed to provide a determination on them.

The Court set aside the order dated July 14, 2022, and remanded the matter back to the Respondent for fresh consideration.

The Controller was directed to decide the matter on its merits, addressing all objections and providing a fresh opportunity for a hearing within six months.

The court further ordered that a copy of the decision be sent to the Controller General of Patents for necessary administrative action.