Patent rejection orders must be reasoned, speaking, and confined to grounds raised in the hearing notice.

The Petitioner filed Patent Application No. 202221047021 for an invention titled "A Syringe With Breakable Plunger," designed to prevent the reuse of syringes

Following the First Examination Report (FER), which raised objections regarding novelty and inventive step, the Respondent issued a hearing notice on October 20, 2023

Crucially, this notice was limited only to objections regarding "inventive step" under Section 2(1)(ja) and omitted the "novelty" objection

Despite this, the Respondent issued an impugned order on March 4, 2024, refusing the patent on the grounds of both lack of novelty and lack of inventive step

The Petitioner challenged this order, alleging it was a non-speaking order that merely reproduced prior art without independent analysis

1. Whether the Respondent violated the principles of natural justice by refusing the patent application on the ground of "novelty" when such a ground was not included in the hearing notice.

2. Whether an order refusing a patent application is sustainable if it lacks independent reasoning and merely reproduces portions of prior art and boilerplate conclusions.

3. Whether the Controller failed to follow the structured analysis for determining "inventive step" as mandated by the Patent Office Manual of Practice and Procedure.

The Court applied Section 2(1)(j) and Section 2(1)(ja) of the Patents Act, 1970, defining "novelty" and "inventive step" respectively

It emphasized the appellate nature of such orders under Section 117A, which necessitates that they be "speaking orders" containing independent reasoning

The Court relied on the principles set out in the Patent Office Manual of Practice and Procedure regarding the holistic assessment of an invention rather than the "mosaicing" of individual features

Furthermore, the Court applied the precedent from Huhtamaki OYJ v. Controller of Patents (2023), which mandates that refusal orders must deal systematically and sequentially with objections

The Court applied the precedent from Biomoneta Research Pvt. Ltd. v. Controller General of Patents (2023) regarding the invalidity of boilerplate reasoning

The Court observed that the Respondent committed a fundamental procedural error by adjudicating on "novelty" despite the hearing notice being restricted to "inventive step," thereby depriving the Petitioner of an opportunity to respond to that specific objection

Regarding the merits of the order, the Court found it to be "entirely unreasoned" and "non-speaking"

The Respondent had merely copy-pasted the Petitioner's claims and extracts from prior art documents (D1-D4) without mapping claim elements or explaining how the invention was rendered obvious

The Court noted that the Controller used generic, "boilerplate" phrases like "not persuasive" and "no evidentiary proof," which reflected a total non-application of mind

Additionally, the Respondent failed to conduct the "structured analysis" required by the Patent Office Manual, which prohibits rejecting an invention based on isolated features known in prior art without explaining why a person skilled in the art would be motivated to combine them

The Court set aside the impugned order dated March 4, 2024

The matter was remanded back to the Patent Office for fresh consideration by a different Controller to ensure an impartial and reasoned adjudication in accordance with the law

No order as to costs was made