Summary
The Delhi High Court overturned a Patent Office refusal against Proprietect L P, holding that the Controller acted unfairly by introducing new objections, ignoring amended claims, and issuing a non-speaking order. The case underscores the importance of natural justice and reasoned decisions in patent examinations.
In the case of Proprietect L P v. Controller of Patents, the Delhi High Court set aside a refusal order issued by the Patent Office on multiple grounds, including violation of natural justice, improper assessment of amended claims, and failure to provide detailed reasoning on novelty, inventive step, and claim clarity.
Background
Proprietect L P filed a patent application in 2011 bearing number 5706/DELNP/2011 titled “FOAM LAMINATE PRODUCT AND PROCESS FOR PRODUCTION THEREOF”. The application was examined by the Patent Office in 2017 and objected to under Sections 2(1)(j) (novelty), 2(1)(ja) (inventive step), 10(4)(c) (clarity), and later, 10(5) (sufficiency). After attending a hearing and submitting written arguments with amended claims, the applicant received a refusal order from the Controller on 31.07.2020, refusing the application on grounds of lack of novelty, inventive step, clarity, and a new ground under section 10(5) for insufficiency of disclosure. Aggrieved by the refusal, the applicant appealed to the Delhi High Court under Section 117A of the Patents Act.
Issues
-
-
- Whether the Controller violated principles of natural justice by raising a new objection under Section 10(5) for the first time in the final order.
- Whether the Controller failed to consider the amended claims submitted after the hearing.
- Whether the refusal order lacked sufficient reasoning on novelty, inventive step, and claim clarity.
-
Arguments submitted by Proprietect L P
Proprietect claimed that the objection under Section 10(5) was introduced for the first time in the final order, depriving them of a fair opportunity to respond. They also argued that the Controller had failed to examine the amended claims submitted after the hearing and that the refusal order was cryptic, lacking any analysis of written or oral submissions.
Patent Office’s submissions
The Patent Office asserted that the claimed invention lacked novelty in light of prior art documents, especially D1. The Patent Office also submitted that the invention was obvious under Section 2(1)(ja), combining features from multiple documents (D1 to D8), therefore lacking inventive step. In addition, the claims lacked clarity and did not sufficiently define essential technical features, violating Sections 10(4)(c) and 10(5) of the Patents Act.
Court’s Findings and Analysis
Raising new grounds in a patent hearing or refusal
Relying on the decision in Perkinelmer Health Sciences Inc. and Ors vs Controller Of Patents, 2023 SCC OnLine Del 8590, the Court observed that Controllers cannot raise new grounds during the hearing as it does not provide sufficient opportunity to the Applicant to contest the same. The court observed that the objection under Section 10(5) in the present case had not been raised earlier, either in the FER or the hearing notice. Therefore, raising new grounds in the Hearing Notice or, as in this case, in the final Order is not permissible as it does not provide a reasonable opportunity to the applicant to be heard.
Consideration of amended claims and reasoned orders
The court noted that the applicant had submitted amended claims after the hearing, specifically to address objections. However, the Controller had failed to examine these amended claims and relied only on earlier objections. The court emphasized that this undermined procedural fairness. The Court also noted that the refusal order merely reproduced the language from the FER and hearing notice without engaging with the explanations or amended claims submitted by the applicant. It held that this failure rendered the order non-speaking and unjust.
Conclusion
In view of the findings and the observations, the Court directed that the refusal order dated 31.07.2020 be set aside. The Court remanded the matter to the controller for fresh consideration and directed the office to issue a new hearing notice and decide the application after considering all submissions, preferably within six months.
Citation: Proprietect L P v. Controller of Patents, C.A.(COMM.IPD-PAT) 168/2022, decided on 29 July 2025 Available on: https://indiankanoon.org/doc/179514735/
