The Delhi High Court has once again stressed that a patent refusal order should address all grounds of objection raised in the hearing notice, particularly when the applicant has responded to each of them. A refusal based only on one preliminary or technical objection, without dealing with other objections such as novelty, inventive step or patentability, may leave the appellate court without a complete set of findings to examine. This issue arose in JFE Steel Corporation vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 483/2022], where the Controller refused the application solely on objections under Section 10(4), without deciding on the remaining objections raised in the hearing notice.
In the impugned order, the Controller refused JFE Steel Corporation’s patent application relating to a method for activating a continuous annealing furnace by adjusting the in-furnace atmosphere to a mixture of hydrogen and nitrogen. The refusal was based on Section 10(4)(a) read with Section 10(4)(c) of the Patents Act, 1970. However, the hearing notice had also raised objections relating to lack of novelty under Section 2(1)(j), lack of inventive step under Section 2(1)(ja), and non-patentability under Section 3(d). The Controller recorded that, in view of the objection under Section 10(4), the other objections were not required to be considered.
Case of the Appellant
The appellant submitted that the respondent Controller had rejected the subject application solely under Section 10(4)(a) read with Section 10(4)(c) of the Act, without examining their responses to the objections relating to novelty, inventive step and non-patentability under Section 3(d). It was argued that the refusal order was incomplete because it did not address all objections raised in the hearing notice.
Court’s Analysis and Findings
On Grounds of Rejection
On perusing the impugned order, the Court found that the application had been rejected only under Section 10(4)(a) read with Section 10(4)(c) of the Act. The order also recorded that a decision on the objections relating to novelty and inventive step was either not required or could not be taken. The Court noted that this approach left the remaining objections undecided despite their inclusion in the hearing notice.
On Completeness of the Decision
The Court drew an analogy with civil proceedings and observed that, when issues are framed in a civil suit, the Court ordinarily decides all issues so that the appellate court has a reasoned decision on each issue. The Court held that the Controller should similarly decide all objections raised and responded to by the patent applicant. It further noted that, unlike Order XLI of the Code of Civil Procedure, 1908, the Patents Act does not provide the appellate court with a similar mechanism to remand specific undecided issues or direct recording of additional evidence. For this reason as well, the impugned order was found to be unsustainable.
On Delay and Time-consuming Proceedings before the Patent Office
The Court also noted that patent prosecution is often time-consuming and may take years before reaching the stage of final hearing. Since the shelf life of a patent is limited to 20 years from the priority date, repeated remands on objections left undecided by the Controller can unfairly consume a substantial part of the patent term. The Court observed that a patent application must be considered as a whole. If the final decision is based only on one or more objections, without dealing with the remaining objections and the applicant’s responses, the applicant may be compelled to approach the appellate court repeatedly. Such a course, according to the Court, is avoidable and unfair to patent applicants.
On the Appellate Court Not Being a PSITA
The Court observed that, even if it were to find the objections under Sections 10(4)(a) and 10(4)(c) unsustainable, it could not itself decide the objections relating to novelty and inventive step in the absence of findings by the Controller. As an appellate court, the Court could neither place itself in the position of the Controller nor arrogate to itself the power to consider objections without a proper determination by the Controller first. Thus, the Court held that it could not assume the role of the Controller or place itself in the position of a person skilled in the art (PSITA).
Court’s Ruling
The Court relied on Adama Makhteshim Ltd. vs The Controller of Patents & Designs [C.A. (COMM.IPD-PAT) 167/2022], where it was held that the Controller should examine all grounds of objection while deciding a patent application, even if the application is found to be non-patentable on one preliminary or technical ground. The same approach was followed in Medilabo RFP Inc. vs The Controller of Patents. Applying these principles, the Court allowed the appeal filed by JFE Steel Corporation, setting aside the impugned order and directing the Controller to reconsider the matter. The Court also directed the CGPDTM to take necessary administrative action.
Concluding Remarks
The Court’s decision is a vital reminder that the Controller’s decision under Section 15 of the Patents Act must be complete and reasoned. When several objections are raised in the hearing notice and the objections are answered by the applicant, the final order must deal with each of them, even if one objection is sufficient to refuse the application. This ensures that the appellate court has the benefit of the Controller’s findings on all issues and prevents avoidable remands.
The decision also recognises the practical impact of delay in patent prosecution. Since the patent term is limited, repeated remands on undecided objections can seriously prejudice applicants. The ruling therefore underpins the need for the Patent Office to decide patent applications as a whole and to avoid a piecemeal approach in refusal orders.
Author – DPS Parmar (Special Counsel)