Patent refusal order set aside, matter remanded back for DeNovo consideration


In recent times, Indian Courts have issued several orders relating to lack of rationale and reasoning when refusing a patent application u/s 15 of the Patents Act. The current case deals with one such refusal order and the appeal filed by a Patent applicant against the same.


The Applicant “WB innovations limited” filed a national phase application in India bearing number 2293/DELNP/2011 on 29th March 2011.A First Examination report was issued on 4th September 2018 and the matter was heard by the Controller through a hearing conducted on 9th March 2020. In response to the objections raised in the FER, the applicant amended the original set of claims. No further amendments were however proposed or submitted by the Applicant in response to the hearing notice.


The application contained 24 claims, of which independent claim 1 read as follows:

    1. Beverage can closure element (10) with a cover element (12) for configuring in an opening in a beverage can (30) and a locking mechanism (16) embodied and/or configured on the cover element (12) which is embodied and/or configured in a manner that the  beverage can closure element (10) configured in an opening in a beverage can (30) can be  locked in an opening of a beverage can (30),

wherein the cover element (12) is embodied and configured so that, if the beverage can  closure element (10) is configured in an opening of a beverage can (30), the cover element (12) is elastically deformable between at least two states, whereby the locking mechanism (16) is configured and embodied in such a manner on the cover element (12) that the looking  mechanism (16) in at least one state of the cover element (12) of the at least two states of  the cover element (12) is configured further inwards in a radial direction relative to the cover  element (12) than in at least one other of the at least two states of the cover element (12),

characterized in that

the cover element (12) exhibits at least one, preferably several, reinforcing ribs (127) and/or  reinforcing grooves (126).

Controller’s reasoning:

The Controller refused the application under section 15 of the Patents Act with the following reasoning:

“2. Amended claims 19-22 are talking about a beverage can lid which are having dependency on claims 1-18 but claims 1-18 does not tell about any beverage can lid. Therefore, do not fall under single inventive concept and forms distinct invention.

    1. Complete specification is not prepared in the prescribed/formal manner. Application should include the following sections in order: Title of the invention, background of the invention, field of the invention, description of related art, brief summary of the invention, brief description of the drawing(s), detailed description of the invention, claims, abstract, drawings. The argument of ld. agent for applicant that cover element (12) exhibits at least one, preferably several, reinforcing ribs (127) and/or reinforcing grooves (126) forms the inventive feature/step over the teachings of cited document is not convincing. These features shall be obvious to a person skilled in the art in view of the teachings of the cited documents u/s 2(1)(j) read with 2(1) (ja) of “The Patents Act 1970”.

With regard to objection 2 above, the ld. agent for applicant could not produce any convincing argument on formation of distinct invention by claims 19-22. Further the ld. agent for applicant also did not restructured and redrafted the specification as desired in reference to objection 3.

Therefore, this application is refused patent for want of compliance of requirements as above; u/s 15 of ‘The Patent Act 1970’. The application stands disposed off.”

Court’s Analysis:

Referring to decisions in Blackberry Limited V. Assistant Controller of Patents and Designs C.A. (COMM-IPD-PAT) 301/2022 and Dolby International AB V. The Assistant Controller of Patents and Designs, the Court stated that the reasoning provided by the controller did not meet the requirement of law.

Based on the fact that, the Controller was himself willing to reconsider the matter, without going into the merits of the case, the Court set aside the order and remanded the matter to the Controller for de novo consideration. The Court restored the patent application to its original number. Further, the Court stated that the Respondent shall issue a hearing notice and that a decision shall be rendered within a period of four months from the date of conclusion of the hearing. The Court directed that the decision be made uninfluenced by any observations made in the impugned order.



Authored by Ms. Sowmya S. Murthy, Patent Team, BananaIP Counsels.

Reviewed and confirmed by Mr. Gaurav Mishra, Patent Team, BananaIP Counsels


The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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