With multiple patent matters being remanded to the Patent Office, the question of what amounts to reopening the examination process beyond the remit and scope of a remand order came up before the Bombay High Court in Qualyst Transporter Solutions LLC vs The Assistant Controller of Patents & Designs [Interim Application No. 1778 of 2026 in Commercial Miscellaneous Petition No. 61 of 2025]. In this case, the applicant contended that the respondent Controller, instead of granting a fresh hearing as directed by the Court vide order dated October 15, 2025, was seeking to proceed de novo by raising fresh objections and introducing new prior art references.
The applicant sought clarification that the remand order required the fresh hearing to be confined strictly to objections forming part of the earlier record, and that no new objections or prior art references could be introduced at this stage. The applicant raised a pertinent question on the limitations of the remand order. The Court referred to the decisions in Kiran Thakur, Smt. Ramabai and Kapil Satish Phalke, relied upon by the applicant, wherein the scope of remand was discussed. In these cases, it was held that the jurisdiction of the Court or authority after an order of remand depends entirely upon the terms of the remand order, and that no issue beyond those limits can be reopened.
The Court also referred to Kapil Satish Phalke vs Sub-Divisional Officer, Koregaon, wherein it was held that a remand cannot be utilised merely to redo what has already been considered or to fill evidentiary lacunae where the record is otherwise complete. In the present case, the Court held that the Controller’s jurisdiction on remand was confined to curing the procedural defect identified in the remand order by giving the petitioner a fresh hearing. It did not extend to reopening the examination process de novo by introducing fresh objections or new prior art references that had admittedly never been raised before. The Court clarified that the expression “considered afresh before an independent Controller” had to be read in the context of the facts in which the remand order was passed and could not be read in isolation. The remand was directed because the petitioner had been denied an opportunity to meet certain objections, which amounted to a violation of the principles of natural justice.
This case settles the issue that where a remand is ordered to cure a specific procedural defect, the authority cannot treat it as an opportunity to reopen the entire examination process. In the present case, the impugned order stood vitiated because there was a breach of the principles of natural justice, and the matter was remanded for a fresh hearing. The remanded proceedings were therefore required to proceed only for correcting that defect, and not for introducing new objections or fresh prior art references.
Petitioner’s Argument
The petitioner submitted that the remand order was clear and unambiguous, and all that the respondent Controller was required to do was to grant a fresh hearing and nothing more. The petitioner contended that, instead of doing so, the respondent Controller had sought to restart the patent examination process by issuing a hearing notice dated January 16, 2026, which raised entirely new objections. According to the petitioner, this amounted to de novo consideration of the case and resulted in the introduction of fresh objections beyond the scope of the remand order passed by the Court.
The petitioner relied on a number of decided cases to show that the respondent Controller’s conduct was contrary to settled principles governing remand proceedings. The petitioner also pointed out that, in Shree Champalal Kothari, this Court had clarified that a remand does not obliterate prior proceedings. Where the remand is limited in nature, the authority to whom the matter is remanded is bound to act strictly within the confines of the remand order and cannot proceed on the footing that the entire matter stands reopened or permit new pleadings and issues that did not form part of the original dispute.
Respondent Controller’s Reply
The respondent Controller submitted that patent prosecution stands on a different footing from ordinary civil litigation and that the Controller possesses the power to raise further objections during the course of examination proceedings. The respondent referred to the Patent Office guidelines and argued that such objections may be communicated through a hearing notice, as contemplated under Clause (k) of Circular No. 4 of 2011. The respondent relied on PerkinElmer Health Sciences Inc., Otsuka Pharmaceutical Co. Ltd. and Bayer Pharm Aktiengesellschaft in support of this contention.
Decision of the Court and Reasons
The Court considered the rival contentions and the relevant case law and found that the application deserved to be allowed. The Court observed that there could be no dispute with the precedent laid down in PerkinElmer Health Sciences Inc., Otsuka Pharmaceutical Co. Ltd. and Bayer Pharm Aktiengesellschaft, relied upon by the respondent, wherein it was held that the Controller possesses the power to raise further objections during the course of examination proceedings and that such objections must be communicated through a hearing notice. However, the question in the present case was whether those principles would apply in the facts of the case, given the remit and scope of the remand order. The Court held that they would not.
The Court clarified that although the remand order recorded that the matter was to be “considered afresh before an independent Controller”, this expression had to be read in the context of the facts in which the remand order was passed and could not be read in isolation. The remand was directed because the petitioner had been denied an opportunity to meet certain objections. It was not founded on any perceived deficiency in the examination process itself. The Court also noted that, when the remand order was passed, there was no indication from the Controller that further examination was required or that additional prior art references or fresh objections would have to be raised. On the contrary, the matter proceeded on the basis that the only defect requiring correction was the breach of natural justice, and the respondent had accepted the direction that a fresh hearing be given.
The Court acknowledged that patent prosecution stands on a somewhat different footing from ordinary civil litigation and that considerations of public interest necessarily inform the grant of patent rights. However, the Court held that this distinction did not materially assist the respondent in the facts of the present case. The issue was not whether the Controller, as a matter of statutory power, may generally raise further objections during prosecution, but whether the Controller could exceed and go beyond the specific terms and limited purpose of the remand order. The Court answered this question in the negative.
The Court held that, considering the facts of the present case, the Controller’s jurisdiction on remand was confined to curing the procedural defect identified in the remand order by giving the petitioner a fresh hearing. It did not extend to reopening the examination process de novo by introducing fresh objections or new prior art references that had admittedly never been raised before. The Court found the petitioner’s reliance on Euro-Apex B.V., Grupo Petrotemex S.A. de C.V. and Kamterter Products LLC to be apposite. Additionally, the Court held that the decisions in Kiran Thakur, Smt. Ramabai and Kapil Satish Phalke, wherein the scope of remand was discussed, squarely applied to the facts of the present case. The Court accordingly allowed the application.
Decision of the Court
The Court allowed the application and directed that the fresh hearing be completed and a decision be rendered within eight weeks from the date on which a copy of the order was uploaded. On the request of the respondent Controller, and considering the wider ramifications of the ruling, the Court stayed the effect of its order for four weeks.
Concluding Comments
The Court rightly held that the Controller’s jurisdiction on remand was confined to curing the procedural defect identified in the remand order by giving the petitioner a fresh hearing. It did not extend to reopening the examination process de novo by introducing fresh objections or new prior art references that had admittedly never been raised before. The ruling explains the purpose and scope of remand orders passed by courts in patent appeal matters.
The Court clarified that where a patent matter is remanded solely to cure a violation of natural justice, the Patent Office cannot use the remand as an opportunity to restart the examination process. However, the Patent Office may still elaborate upon, clarify or further develop objections that already emerge from the examination record and prior art references forming part of the existing proceedings. The limited prohibition is against introducing entirely new prior art references or wholly new grounds of objection beyond the scope of the remand.
The decision is significant because it balances the Controller’s statutory role in patent examination with the settled principle that an authority acting on remand must remain within the four corners of the remand order. The scope of remand must therefore be understood from the terms of the order and the defect sought to be cured, and not as a general licence to reopen concluded stages of examination.
Author: DPS Parmar