Section 15 of the Patent Act empowers the Controller to refuse a patent if an applicant fails to comply with the requirements of the Patent Act or the Patent Rules. What appears at first sight, as a sweeping unbridled discretion of the Controller to refuse any patent, in fact, envisages using this discretion with caution or rather having a ridder to give an opportunity to the applicant to amend application, specification or the other documents to the satisfaction of the Controller before any adverse decision to refuse the patent is taken. This ridder is harsh when the application is refused purely on non-technical grounds.
The appeal courts in India have ordered corrective measures to be taken by the Controllers/Patent Office where applicants are refused purely on non-technical grounds. The courts are categorical in stating that the rights of the patent applicants should not be extinguished at the threshold without going into the technical merits of otherwise genuine patent-eligible inventions.
Lessons From Parikumar Case
In Parikumar vs Controller General of Patents (2013), the application was not allowed to file the PCT application with deleted claims. The IPA Board ruled that the Controller’s rejection based on insufficient fees was unreasonable because the Controller failed to provide the applicant with an opportunity to rectify his deficiency, which could have been a result of miscalculation. The IPA Board observed that “the Controller’s rejection of the application on the last date only on the ground of insufficient of fees appears to be unreasonable since the appellant has not been given an opportunity to rectify his mistake. The patent application may fail for other reasons but not because perhaps by a miscalculation or arithmetical error, the correct fees has not paid. In this case there are the following factors which persuade us to interfere.”
In this case, without saying candidly that such inadvertent error cannot result in the patent application being shut out at the threshold, the application was allowed to proceed for consideration for the grant of a patent as per the law. This landmark case later resulted in the amendment of patent rules relating to allowing deletions of claims during the filing of a national phase application.
Refusal of a Patent on a Non-Attending Hearing
Another non-technical ground for rejecting a patent came to light when Star Scientific Limited filed an appeal against the rejection of their patent merely on the grounds that they had not attended the scheduled hearing. In Star Scientific Limited v. Controller of Patents and Designs, [C.A.(COMM.IPD-PAT) 20/2024] [Neutral Citation no. 22024: DHC5643], Judge Mini Pushkarna, while allowing the appeal, categorically ruled that:
‘11. Merely because the appellant did not attend the hearing, cannot be the basis of passing a decision under Section 15 of the Patent Act.’
In this case, the Court also placed reliance on Rule 28(5) of the Patent Rules, 2003 and held that the language of sub-rule (5) which read that ‘After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard]’ is clear enough to statutorily bound the Respondent to decide the patent application, irrespective of whether or not the applicant attended the hearing before the Respondent. This ruling also makes it evident that a non-technical ground (like non-attendance at the hearing) of refusal of a patent cannot replace a reasoned decision as required under patent law.
Reasoned Decision vs Cut and Paste
In an appeal in Huhtamaki Oyj and Another v. Controller of Patents, [2023 SCC OnLine Del 3272], Judge C. Hari Shankar emphatically observed that.
“8. This is yet another order which reflects the apparently endemic problem in the office of the Controller of Patents and Designs, reflected in order after order coming before this Court, to reject patent applications by merely reproducing the objections issued to the proposed patentee, without even a word of reference to the reply of the patentee filed in response thereto, and totally without any application of mind whatsoever.
- This Court is really at a loss to what is to be done in these circumstances. Repeated strictures, in order after order, may end up doing more harm than good.
- I am unable to understand why adjudicating officers in the patent office have apparently made a habit to pass orders which merely cut and paste paragraphs from the record before the officer, and reflect no application of mind at all to the case that the applicant seeks to set up.
- For the end time, this Court is reiterating that refusal of a patent application is a serious matter. …… If patent applications are to be decided laconically, as has been done in the present case, patent applicants will have to keep knocking at the doors of the Court, wasting their time in unnecessary litigation.”
This case again highlights the refusal order without any speaking order. The Court also lamented that if patent applications are to be decided laconically, patent applicants will have to keep knocking at the doors of the Court, wasting their time in unnecessary litigation. This litigation could have been avoided by a little application of mind and by taking extra care to write the speaking order based on the technical aspect of the invention.
Lessons from the Huawei Technologies Case
This case again highlighted the mechanical approach by the Controller when he refused the patent application filed by Huawei Technologies Co., Ltd, solely due to an alleged procedural irregularity in filing the General Power of Attorney (GPA). The Court in Huawei Technologies Co. Ltd. v. Controller General of Patents [April 22, 2025] allowed the appeal and ruled that the application had been rejected not for technical deficiencies, but due to a supposed invalidity in the General Power of Attorney (GPA). Calling this approach a hyper-technical and mechanical approach, the Court observed that:
- There is absolutely no adjudication on the merits of the case and there has been no discussion of the subject invention. The impugned order is a wasteful exercise of time, expense and money and serves no purpose whatsoever. Such a pedantic, formal and hyper-technical approach is counter-productive to the entire object behind grant of patents. Procedure is a handmaid of justice and not its mistress which highlights that procedural laws should not dominate the substantive rights of parties.”
This case sets a precedent for patent offices to clearly differentiate between the technical rejection of a patent and non-technical reasons for rejection of a patent application.
Refused to Grant Patent vs Refused to Proceed
When the Controller faces non-compliance with certain provisions of the Patent Act and Patent rules, he encounters a dilemma: either to refuse the application straightaway or keep the application in abeyance. When both options are available to the Controller, he has a choice between a harsher (refusal) and a less harsh (refusal to proceed) option. The primary function of the Controller is to consider the application for the grant of a patent based on its technical assessment. For instance, if the invention is found to be non-patentable as per section 3, he may choose to refuse the patent where amendment may not change the position of the substantive objection.
However, if the objection to the patent application is purely non-technical, he may allow the applicant to amend or comply. He may pass an order to refuse to proceed with the application until the applicant carries out the desired amendments. Keeping the application alive will meet the requirement of natural justice. If the applicant fails to meet the requirement of the Controller’s order within the time specified in the order, the Controller can pass a reasoned order refusing the application. This approach appears to be the sound position under the discretion of the Controller to refuse the application under Section 15.
Concluding Remarks
The cases referred to above merely highlight some common non-technical challenges that patent applicants face, which may lead to rejection of the otherwise patentable invention. The courts have repeatedly reiterated that procedural roadblocks (non-technical objections) cannot form a firm basis for rejecting a patent. The courts in India are alive and do not hesitate to intervene in such situations and direct the patent office to reconsider and pass the speaking and reasoned orders. If the defects are curable, then harsh action like refusal may be avoided, and the applicant should be given an opportunity to rectify the defect. The latter aspect will meet the requirement of natural justice.
The cases discussed above are merely representative to highlight the non-technical basis of rejection of a patent application. The applicant may come across any other non-technical object which may threaten the grant of a patent. Expert advice can save such an application from being subjected to an adverse decision under section 15. In the words of Justice Ravi Krishan Kapur in the Huawei case, “Procedure is a handmaid of justice and not its mistress, which highlights that procedural laws should not dominate the substantive rights of parties.” This landmark observation is going to have a positive impact on the future decisions of the patent office.
Author: DPS Parmar
First Published by: Mondaq here