The rejection of the patent application No. 202221047021 for “A Syringe with Breakable Plunger” by the Assistant Controller of Patents and Designs came under judicial scrutiny for alleged violations of principles of natural justice and for failing to provide reasons for rejecting the patent on the ground of lack of novelty/inventive step. In Medipack Global Ventures Private Limited vs Assistant Controller of Patents and Designs [March 23, 2026], the allegation of violation of principles of natural justice stemmed from the fact that, even though the lack of novelty objection was taken in the impugned order, it was not communicated in the hearing notice.
The appellant also contended that earlier judicial directions to the Patent Office in Huhtamaki OYJ vs Controller of Patents against passing mechanical patent refusal orders without giving speaking reasons had gone unheeded in this case. The appellant submitted that the impugned order was a non-speaking order since the same was devoid of any independent reasoning by the Respondent.
Case of the Appellant
The appellant contended that the respondent Controller travelled beyond the grounds taken in the hearing notice. They pointed out that, although the hearing notice was confined to the aspect of inventive step under Section 2(1)(ja) of the Patents Act, 1970, the respondent Controller refused the patent application on both grounds of novelty and inventive step. The appellant contended that the respondent Controller had acted in complete breach of the principles of natural justice, as the appellant was not given an opportunity to present arguments against the rejection of the patent on the ground of novelty. Additionally, the impugned order was a non-speaking order, as it was devoid of any independent reasoning by the respondent.
The appellant categorically pointed out that the impugned order merely reproduced the petitioner’s claims and extracts from the prior art without in any manner mapping the specific claim elements to the cited disclosures or explaining how the invention was anticipated or rendered obvious from the cited prior art. The appellant submitted that the Respondent Controller acted merely in a mechanical manner by reproducing the petitioner’s claims and the prior art cited and simply concluding that the petitioner’s submissions were “not persuasive”. This finding by the respondent Controller was unsupported by any independent analysis or reasoning as to why the appellant’s submissions were not persuasive. The appellant also pointed out that, despite the judicial precedent of the Delhi High Court in the Huhtamaki case, wherein the Court lamented the “endemic problem” of non-speaking orders passed by the Patent Office, the respondent Controller in this case again passed a non-speaking order.
Reply of the Respondent Controller
The respondent Controller submitted that clear and concise reasons for the decision arrived at had been provided in the order. The respondent contended that each of the Petitioner’s arguments was addressed, including citation of the relevant legal provisions for rejection of the patent. The respondent further submitted that the conclusion reached was after duly considering all the claims of the petitioner and the prior art.
Court’s Analysis and Findings
When the Court asked the respondent to point out from the order the reasoning by which they had independently considered the petitioner’s claims and juxtaposed the same with the prior art, they were unable to do so. The respondent was also unable to explain why they addressed the issue of novelty in the impugned order, even though the hearing notice did not raise the issue. This clearly indicated that the respondent Controller failed to pass a speaking order in this case.
On Violation of Principles of Natural Justice
The Court perused the records to find that the respondent Controller had rejected the patent on the ground of novelty, which was not raised in the hearing notice. According to the Court, this amounted to a clear violation of the principles of natural justice, as the respondent Controller had clearly travelled beyond the hearing notice and proceeded to determine an issue to which the petitioner was never given an opportunity to respond.
On Speaking Order and Reasons for the Rejection
The Court found that all that the Controller did was reproduce the petitioner’s claims and portions from the cited prior art and conclude, based on the prior art, that the petitioner’s claims were not persuasive, without in any manner explaining how the Petitioner’s amended claims were anticipated or rendered obvious from the cited prior art. The Court found that no independent reasoning whatsoever was given to support the finding that the invention lacked inventive step or, for that matter, novelty. The Court perused the impugned order and found that it was entirely unreasoned.
On Applicability of the ‘Huhtamaki’ Ruling
The Court relied on the Delhi High Court’s decision in the Huhtamaki case, wherein the Court lamented the endemic problem of non-speaking orders being passed by the Controller, and held that the same was entirely apposite to the facts of the present case. The Court pointed out that:
“Sadly, the Delhi High Court’s lament seems to have fallen on deaf ears since the problem very much persists to date, as is evident from a perusal of the impugned order. The Controller has also clearly disregarded the following directions issued by the Delhi High Court to be followed when deciding a patent application, viz.
(i) Every order which either (a) rejects an application ……., shall be reasoned and speaking, and shall deal systematically and sequentially with each objection that requires consideration, whether contained in the FER, or the hearing notice, or in ………… and provide reasons as to why the objection is sustained or rejected.”
Decision of the Court
The Court, having considered the case law upon which reliance was placed, found that the petition deserved to be allowed. The Court set aside the impugned order and directed that the matter be remanded for fresh consideration before a different Controller, who shall adjudicate the application in accordance with law. The Court, without mincing words, pointed out that judicial warnings against mechanical patent refusal orders appear to have gone unheeded in this case.
Concluding Remarks
This case falls into the category of quasi-judicial orders that lack reasons and are most likely to be deemed lifeless, arbitrary, and legally unsustainable by appellate courts. It is a trite law that reason is the heart and soul of a judgment. More so, refusal orders of the Patent Office denying a patent application must be supported by technically sound reasons to meet the legal requirements enshrined in patent law. The quasi-judicial power of the Controller should be driven and guided by clear and logical reasons while passing any appealable order. It was, therefore, incumbent upon the Controller to give independent reasons to support the rejection of the patent application in this case. The Court rightly set aside the refusal of the patent application in this case after finding that the Controller of Patents had passed an unreasoned, non-speaking order while rejecting the applicant’s claims.