Summary
Wirtgen GMBH, a German engineering company, filed an Indian patent application in 2010 covering a specialised bit holder and base part system used in road milling and surface mining machines. After a protracted examination process, the Assistant Controller refused the application in 2019 on grounds of lack of inventive step under Section 2(1)(ja) and failure to define the scope of the invention under Section 10(4)(c) of the Patents Act, 1970. The Delhi High Court found that several of the objections under Section 10(4)(c) had never been communicated to Wirtgen GMBH in the First Examination Report or the hearing notice, and that the inventive step analysis failed to apply the prescribed five-step test. Setting aside the refusal, the court remanded the matter to the Patent Office for a fresh, fair hearing. The ruling reinforces that patent examination natural justice is not a formality: applicants must have a genuine opportunity to address every objection before it can ground a refusal.
Background
In patent prosecution, the examination process is meant to be a dialogue, a structured exchange in which the Patent Office identifies concerns and the applicant responds. When that dialogue breaks down, and an applicant faces a refusal based on grounds it never had the chance to address, the resulting order is not merely unfair; it is legally infirm. That is precisely what the Delhi High Court confronted in an appeal by Wirtgen GMBH against the refusal of its Indian patent application.
Wirtgen GMBH (“Wirtgen”), a German engineering company, filed Indian Patent Application No. 2874/DEL/2010 on 3 December 2010 as a convention application claiming priority from a German patent dated 17 December 2009. The application covered an invention titled “Bit Holder and Base Part for Receiving a Bit Holder”. The claim centred on a specific geometric arrangement: supporting and bearing surfaces set at angles to one another, and an obtuse angle between the bit receptacle’s longitudinal axis and the insertion projection, designed to distribute transverse loads and create a rigid, durable engagement between the holder and the base part.
The First Examination Report (“FER”) issued on 13 July 2017, six and a half years after filing, raised two primary objections: lack of inventive step under Section 2(1)(ja) of the Patents Act, and failure of the claims to define the scope of the invention under Section 10(4)(c). Wirtgen filed a detailed response on 5 January 2018, addressing each objection and amending the claims to replace the phrase “according to” in dependent claims with “as claimed in claim,” as required. A hearing notice followed on 30 August 2019, raising further specific objections on claim clarity. Wirtgen sought and obtained a one-month extension under Rule 138 and filed written submissions on 1 November 2019. Two weeks later, on 25 November 2019, the Assistant Controller of Patents and Designs (“Patent Office”) issued an order refusing the application on the grounds of lack of inventive step and non-definiteness of claims, which was communicated to Wirtgen on 27 November 2019. Aggrieved by the refusal, Wirtgen appealed to the Delhi High Court under Section 117A of the Patents Act.
Issues before the Court
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- Whether the refusal of the Subject Patent Application under Section 10(4)(c) of the Patents Act was procedurally valid, given that certain objections regarding claim language were raised for the first time in the impugned order without prior notice in the FER or hearing notice.
- Whether the finding of lack of inventive step under Section 2(1)(ja) was analytically sufficient, in particular whether the Controller applied the prescribed five-step test and provided a reasoned, feature-wise analysis of the claims against the cited prior art.
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Arguments by the Parties
Wirtgen argued that the invention lay in the specific alignment and orientation of the support surfaces of the bit holder and base part. It said that D1 to D3 did not disclose the claimed inventive features, and that the refusal order did not carry out a proper comparison of claim features with D4. It also argued that several objections under Section 10(4)(c), such as objections relating to “transverse central plane,” “extend locally,” overlap between claims 9 and 10, “in front of the longitudinal axis,” and “at least locally with an offset” in claim 19, were raised for the first time in the refusal order. Wirtgen therefore submitted that this denied it a fair opportunity to respond.
The Patent Office argued that the refusal order had to be read as a whole. According to them, D1 to D3 showed the common general knowledge of a two-part tool system consisting of a base part and a removable holder, while D4 supplied the teaching of multiple support surfaces and improved durability. The Office argued that a skilled person would combine these teachings and arrive at the claimed invention. On claim clarity, the respondents argued that even if some specific words were not separately identified earlier, the claims containing those words had been referred to in the hearing notice, and therefore the objections were not wholly new. The Office also argued that an independent claim must define the invention clearly on its own terms. According to the office, an independent claim must define the invention on its own terms; Claim 1’s language on the obtuse angle failed to specify which of multiple possible obtuse angles was being claimed, rendering the scope of the monopoly indefinite regardless of what the specification might clarify.
Court’s Analysis
The court first addressed the Section 10(4)(c) issue. The court stated that patent examination must follow principles of natural justice and that an applicant must get a fair opportunity to meet objections that may later become the basis of refusal. The court examined the First Examination Report, the hearing notice, and the refusal order, and found that some objections appeared for the first time in the final refusal order. These included objections relating to “transverse central plane,” “extend locally,” overlap between claims 9 and 10, “in front of the longitudinal axis,” and “at least locally with an offset” in claim 19. The court noted that, if new grounds are introduced only in the final order, the applicant loses the opportunity to clarify claims, amend the specification, or make submissions on those points. The court therefore held that the Section 10(4)(c) analysis required fresh consideration.
The court then dealt with the argument that claims cannot be read with the description or drawings. The court rejected that position. The court stated that Sections 10(4)(c) and 10(5) require claims to be fairly based on the disclosure in the specification, and therefore ambiguous terms in claims can be read with the complete specification. On this point, the court referred to AGFA NV v. Controller of Patents and Designs and Resham Priyadarshini v. Controller of Patents and Designs.
On inventive step under Section 2(1)(ja), the court noted that the invention related to a specific geometric and structural arrangement between the bit holder and the base part. The court stated that the refusal order concluded that D4 could be combined with D1 to D3, but did not explain why a person skilled in the art would actually make that combination to reach the claimed angular and symmetric arrangement. The court stated that the impugned order did not follow the five-step test laid down in F. Hoffmann La Roche Ltd. v. Cipla Ltd. and reaffirmed in Tapas Chatterjee v. Controller of Patents and Designs. The court also noted that the refusal order did not contain a proper feature-by-feature analysis of the claims against the cited prior art. In the eyes of the court, a mere statement that such a combination was possible was not enough to sustain a finding of lack of inventive step.
Taking both issues together, the court held that the refusal order suffered from procedural as well as analytical defects. It therefore set aside the order and sent the matter back for fresh consideration.
Findings
The court set aside the refusal order dated 25 November 2019. The court remanded the matter to the Patent Office for fresh consideration of the objections under Sections 10(4)(c) and 2(1)(ja) of the Patents Act. The court directed that a fresh hearing notice be issued, clearly marking all objections, including those that were mentioned for the first time in the refusal order. The court also allowed the applicant to file fresh written submissions and an amended set of claims, if required. The Patent Office was asked to decide the application preferably within four months. Lastly, the Court clarified that it had not expressed any binding view on the merits of patentability.
Case Citation: Wirtgen GmbH v. Controller General of Patents, Designs and Trademarks, C.A.(COMM.IPD.PAT) 306/2022, decided on 23 March 2026, Delhi High Court. Available on: https://indiankanoon.org/doc/193880457/
Authored by Gaurav Mishra, Patent Attorney, BananaIP Counsels