While allowing the appeal in Wirtgen GmbH vs Controller General of Patents, Designs and Trademarks & Ors. [C.A.(COMM.IPD-PAT) 306/2022, March 23, 2026], the Delhi High Court found analytical and procedural deficiencies in the impugned order of the Assistant Controller of Patents and Designs, through which the patent application for ‘Bit Holder and Base Part for Receiving a Bit Holder’ filed by Wirtgen GmbH was refused on the grounds that the claims lacked inventive step under Section 2(1)(ja) of the Patents Act, 1970, and that the claims did not sufficiently define the scope of the present invention under Section 10(4)(c).
The Court held that a perusal of the impugned order showed that some objections under Section 10(4) were raised for the first time in the impugned order and were not communicated to the applicant. The Court cited the Supreme Court ruling in Assistant Commissioner, Commercial Tax Department vs Shukla and Brothers, wherein the Court issued directions to quasi-judicial authorities to strictly follow the principles of natural justice, particularly the rule of audi alteram partem.
Subject Invention
The subject patent application in the present case covers an invention that relates to a bit holder and a corresponding base part for cutting tools used in milling or mining machines, wherein angled supporting and bearing surfaces and an obtuse angle between the bit receptacle axis and insertion projection axis provide improved load distribution, rigid bracing, and secure mounting under high operational stresses. The invention discloses a bit holder in which the supporting and bearing surfaces are arranged at an angle to each other. The longitudinal axis of the bit receptacle and the insertion projection form an obtuse angle, creating a supporting region that helps dissipate transverse loads during tool use.
Case of the Appellant
The appellant submitted that neither any analysis nor any mapping of features had been conducted by the respondent Controller, which is essential for refusal of a patent on the ground of lack of inventive step in view of the cited prior art D1-D4. He further contended that the respondent Controller had merely reproduced a part of the abstract of D4 in the impugned order and had not compared any feature recited in the claims of the subject application with the disclosure of D4, which was required for establishing lack of novelty. According to the appellant, the respondent Controller had also not explained how and which teachings of D1-D3, in combination with the features disclosed in D4, rendered the present invention obvious. The appellant submitted that the teachings of D1-D4 could not render the present invention obvious, as they failed to disclose or suggest the supporting segment comprising two supporting surfaces arranged at an angle to one another, and the longitudinal centre axis of the bit receptacle and the longitudinal axis (L) of the insertion projection enclosing an obtuse angle.
The appellant pointed out that the respondent Controller had erroneously and arbitrarily refused the subject application under Section 10(4)(c) of the Patents Act on the ground that the claims were not definitive. Several objections, such as those relating to the terms “transverse central plane”, “extend locally”, “in front of the longitudinal axis”, and “at least locally with an offset”, were not even raised in the FER or the hearing notice. According to the appellant, the claims were clear, definite, and fully supported by the specification and drawings.
Reply of the Respondent Controller
The respondent Controller maintained that D1-D3 established the background knowledge available to a person skilled in the art and that the lack of inventive step arose when the teachings of D4 were combined with this background knowledge. The respondent Controller submitted that objections under Section 10(4) were communicated to the appellant in the hearing notice. The contention of the appellant that the respondent had introduced new terms in the impugned order was, according to the respondent Controller, incorrect, as the respondent Controller had already mentioned the claims in the hearing notice within which these terms fell, and thus they had not been introduced for the first time.
Court’s Analysis and Findings
On Fairness and Transparency
On perusal of the FER and hearing notice, the Court found that the technical objections, particularly those relating to the scope of claims under Section 10(4)(c) of the Patents Act, were not clearly communicated to the applicant at the examination stage. According to the Court, a perusal of the impugned order showed that some objections under Section 10(4) were raised for the first time in the impugned order. This course of action by the respondent Controller, according to the Court, runs contrary to the fundamental requirement of fairness and transparency embedded in quasi-judicial decision-making.
The Court found that, in the present matter, while some objections relating to clarity of claim language had indeed been mentioned in the FER and the hearing notice, the impugned order proceeded to introduce additional technical objections and interpretative concerns that were not previously communicated to the applicant. These newly introduced grounds, according to the Court, appeared to have materially influenced the respondent’s conclusion that the claims failed to define the scope of the invention. The Court ruled that the objection under Section 10(4)(c) of the Patents Act required fresh analysis considering the submissions of the appellant. The Court ruled that the respondent Controller shall give a fresh opportunity to the appellant to respond to the objections to the satisfaction of the Controller and thereafter reconsider the claims in light of the complete specification and the submissions of the appellant.
On Flaws in Inventive Step Analysis
The Court perused the claims and complete specification to draw the conclusion that the claims of the complete specification of the subject patent application revealed that the invention lay in a specific geometric and structural arrangement of supporting and bearing surfaces between the bit holder and the base part, intended to create a stable support and guided engagement between the two components.
The Court noted that patent law requires that the conclusion of lack of inventive step under Section 2(1)(ja) of the Patents Act be supported by a reasoned analysis demonstrating why a person skilled in the art would have arrived at the claimed invention without inventive effort. The Court found that the impugned order merely stated that such a combination would be possible, without explaining why the skilled person would be led to modify the structures disclosed in D1-D3 in light of D4 to produce the particular angular and symmetric supporting surface arrangement claimed in the present invention.
‘Five-Step Hoffman Test’ Not Followed
The Court pointed out that the conclusions recorded by the Respondent Controller with respect to inventive step were not supported by a proper feature-wise analysis of the claims vis-à-vis the cited prior art. The Court pointed out that, while arriving at the conclusion relating to lack of inventive step under Section 2(1)(ja), the Respondent Controller did not follow the 5-step test prescribed by the Division Bench of this Court in F. Hoffmann-La Roche Ltd. vs Cipla Ltd., as reaffirmed by another Division Bench of the Court in Tapas Chatterjee vs Controller of Patents & Designs.
In light of the above analysis, the Court held that the impugned order suffered from both analytical and procedural deficiencies and could not be sustained in law.
Decision of the Court
Allowing the appeal, the Court set aside the impugned order with a direction that the matter be remanded to the Respondent Controller for de novo consideration in accordance with law, after affording the applicant an adequate opportunity to address the objections under Sections 10(4)(c) and 2(1)(ja) of the Patents Act.
Concluding Remarks
The High Court in this case reiterated that the applicant must get an opportunity to present his case in view of the objections raised by the Controller. In any event, communication of the objections is at the heart of the examination process and, in fact, governs the decision taken by the Controller. The Court took a strong view that the technical objections, particularly those relating to the scope of claims under Section 10(4)(c) of the Patents Act, must be clearly communicated to the applicant at the examination stage.
The Court in this case discussed the scheme of the Patents Act, which contemplates that objections are first communicated through the FER as required under Section 12 of the Patents Act and, where necessary, clarified through a hearing notice, thereby enabling the applicant to address the concerns of the Controller through written submissions or amendments as prescribed under Section 14 of the Patents Act.
On analysis of Section 2(1)(ja), the Court stated that conclusions arrived at by the Controller with respect to inventive step must be supported by a proper feature-wise analysis of the claims vis-à-vis the cited prior art. The Court once again mandated the Controller to follow the ‘5-step Hoffman test’ while performing the inventive step analysis under Section 2(1)(ja).