The petitioner had filed a patent application that had gone through examination for several years. The First Examination Report was issued in December 2020. The petitioner filed its response and claim amendments in June 2021. Hearing notices followed in August and September 2021.<\/p>\n
The Patent Office later passed an order against the petitioner. That order was challenged before the High Court. During the earlier proceedings, the respondent accepted that the order was unsustainable because questions had been raised for the first time in the impugned order without giving the petitioner an opportunity to deal with them. The Court therefore set aside the order and remanded the matter for a fresh hearing before an independent Controller.<\/p>\n
After remand, the Patent Office issued a hearing notice in January 2026. According to the petitioner, this notice did not merely give a fresh hearing on the existing record. It introduced new objections and new prior art references. The petitioner therefore filed the interim application seeking clarification that the remand was limited to the earlier record and did not permit a fresh examination.<\/p>\n
The Court first accepted that the Controller generally has the power to raise further objections during patent examination, provided those objections are communicated properly through a hearing notice. The Court also accepted that patent prosecution is not the same as ordinary civil litigation because the grant of a patent involves public interest.<\/p>\n
However, according to the Court, that general principle did not decide the present case. The real issue was not whether a Controller can generally raise further objections in patent examination. The issue was whether, after this particular remand order, the Controller could go beyond the scope of that order.<\/p>\n
The Court said that the earlier remand order had to be read in its factual setting. The earlier refusal order had been set aside because objections had been raised for the first time without giving the petitioner an opportunity to meet them. The defect was therefore a breach of natural justice. The remand was meant to cure that defect by giving the petitioner a fresh hearing.<\/p>\n
The Court observed that, at the time of remand, the Controller did not suggest that the examination was incomplete. No liberty was sought to raise fresh objections or to introduce new prior art. The direction that the matter be completed within three months also showed that the matter was not meant to go back to the beginning of examination.<\/p>\n
The judgment recorded that the expression \u201cconsidered afresh\u201d could not be read in isolation. It had to be understood in the context in which the remand was made. In the Court\u2019s view, it meant that the petitioner had to receive a proper hearing on the existing objections and existing record. It did not mean that the Patent Office could start the examination process again.<\/p>\n
The Court also drew a distinction between clarifying or developing objections already on record and introducing wholly new grounds or prior art. The former was permitted. The latter was not. The Controller could explain, elaborate, or develop objections that already emerged from the examination record and existing prior art. But the Controller could not bring in entirely new prior art references or wholly new grounds of objection because that would effectively amount to a fresh examination.<\/p>\n
The findings of the Court are as follows:<\/p>\n
\u201cA plain reading of the Order of Remand makes it clear that the earlier Order was set aside solely because certain questions had been raised for the first time at the hearing without having been previously communicated to the Petitioner, thereby depriving the Petitioner of an opportunity to address them. The impugned Order thus stood vitiated since there was a breach of the principles of natural justice, to which the Respondent had specifically conceded, and the matter was remanded for a fresh hearing. Significantly, when the Order of Remand was passed, the Controller did not suggest that any further objections were required or that the objections raised during the hearing were justified, nor was any liberty to raise fresh objections on remand even sought for. It was thus, and in this context, that the matter was directed to be heard and decided afresh within three months of the Order of Remand, as it was common ground that the stage of examination was well over.\u201d<\/p><\/blockquote>\n
Paragraph 31(C)<\/h3>\n
\u201cWhile it is true that the Order of Remand records that the matter was to be \u201cconsidered afresh before an independent Controller\u201d, use of such nomenclature must be read in the context of the facts in which the Order of Remand was passed and cannot be read in isolation. The remand was directed because the Petitioner had been denied an opportunity of meeting certain objections; it was not founded on any perceived deficiency in the examination process itself. Equally, and as already noted in (B) above, there was no suggestion from the Controller that the examination was incomplete, defective, or otherwise required to be reopened. The direction that the matter be \u201cconsidered afresh\u201d must therefore be understood as requiring a fresh hearing after granting the Petitioner an opportunity to deal with the objections already raised and not as starting the examination process afresh or reopening the same.\u201d<\/p><\/blockquote>\n
Paragraph 31(E)<\/h3>\n
\u201cI am conscious that patent prosecution stands on a somewhat different footing from ordinary civil litigation and that considerations of public interest necessarily inform the grant of patent rights. However, that distinction does not materially assist the Respondent in the facts of the present case since the issue at hand, as already noted in (A) above, is not whether the Controller, as a matter of statutory power, may generally raise further objections during prosecution but whether the Controller can now exceed and go beyond the specific terms and limited purpose of the Order of Remand.\u201d<\/p><\/blockquote>\n
Paragraph 32<\/h3>\n
\u201cAt the same time, it is clarified that this Order shall not preclude the Respondent from elaborating upon, clarifying, or further developing objections that already emerge from the examination record and the prior art references forming part of the proceedings as they stood when the Impugned Order was passed. What is impermissible, however, having regard to the peculiar facts of the present case and the limited scope of the Order of Remand, is the introduction of entirely new prior art references or wholly new grounds of objection. To permit such a course would, in effect, amount to reopening the examination process itself, which is beyond the remit of the Order of Remand.\u201d<\/p><\/blockquote>\n
Case Citation<\/h2>\n