Zhejiang, filed patent application No. 6275\/CHENP\/2011 in 2011 for an invention titled \u201cA Mordant and Hair Coloring Products Containing the Same.\u201d A First Examination Report (FER) was issued on 18 November 2016, raising objections on the grounds of lack of novelty and inventive step. Subsequent to the hearing on 5 October 2017, Zhejiang\u2019s agent emailed two sets of amended claims, namely Claim Set A and Claim Set B to the Controller on 6 October 2017. By email dated 9 October 2017, the Controller accepted both sets of claims, stating \u201cOk file.\u201d Upon receipt of this email, Zhejiang\u2019s agent, on 10 October 2017, confirmed their understanding that both claim sets were acceptable and stated that the amended claims would be filed after receiving instructions from Zhejiang.<\/p>\n
In the impugned order, the Controller refused the application under Section 15, holding that the claims filed on 17 October 2017 did not conform to the claims that had been approved earlier on 9 October 2017.<\/p>\n
The Court noted that the application was refused solely on the ground that the claims filed on 17 October 2017 were contrary to the claims approved by the Controller on 9 October 2017. It observed that, upon comparison, Claim Set A corresponded to rejected claims 1 to 6, while Claim Set B corresponded to rejected claims 7 to 13 through its claims 7 to 12.<\/p>\n
The Court further observed that the claimed invention had been granted patents in multiple jurisdictions, including the EPO, with claims significantly identical to those rejected by the Controller. While noting that the EPO\u2019s decision was not binding on the Controller, the Court held that it was nevertheless a factor to be reckoned while adjudicating the patent application. In the absence of any substantive reasoning to justify the refusal, the Court concluded that the impugned order was unsustainable.<\/p>\n
In conclusion, the Court set aside the impugned order dated 14 November 2017 and remanded the matter for fresh consideration by a different officer to avoid any pre-determination. The Court further permitted Zhejiang to amend the claims in accordance with Section 59 of the Patents Act, 1970. It directed that a hearing be granted, and a reasoned decision be issued within four months, while clarifying that no observations had been made on the merits of the application.<\/p>\n