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

In brief

The question

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.

The court held

The Court held that the impugned order was legally unsustainable due to the violation of natural justice and the lack of independent reasoning

It also directed

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

01Facts

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

¶ 1-2

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

¶ 6(iii)-(v)

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

¶ 6(v)

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

¶ 6(vii)

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

¶ 4

02Issues

i.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.

¶ 7, 21A

ii.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.

¶ 5, 21B

iii.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.

¶ 10-11, 21E

03Law Applied

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

¶ 6

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

¶ 21C

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

¶ 10, 21E

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

¶ 14, 21D

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

¶ 15

Provisions in the judgment · 5 · Linked ones open on LawLens

Patents Act, 1970 Section 2 Section 10 Section 12 Section 13 Section 15

04Reasoning

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

¶ 21A

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

¶ 21B

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

¶ 9, 21B

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

¶ 15, 21C

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

¶ 11, 21E

05Holding

The Court held that the impugned order was legally unsustainable due to the violation of natural justice and the lack of independent reasoning

¶ 21A-B

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

¶ 22(i)

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

¶ 22(ii)

No order as to costs was made

¶ 22(v)

LawLens.Bombay High Court

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