The refusal of a patent application by the Patent Office has come under the judicial scanner of the appellate courts in multiple instances. The key contention of the appellants in most cases invariably stands on the fact that the Respondent Controller had not given reasons for rejection of the application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970.
In Agriboard International LLC vs Deputy Controller of Patents and Designs [March 31, 2022], the appellate court laid down that while rejecting an invention for lack of inventive step under Section 2(1)(ja) of the Act, the Controller must consider three elements: (i) the invention disclosed in the prior art, (ii) the invention disclosed in the application under consideration, and (iii) the manner in which the subject invention would be obvious to a person skilled in the art. This judgment was also followed in Crystal Crop Protection Limited vs Sudpita Dey, Assistant Controller of Patents and Designs & Ors [April 8, 2026]. Therefore, the Controller, as a quasi-judicial authority, is expected to issue orders that contain reasons for acceptance or refusal. Any order which has no reasoning cannot become the bedrock of a decision of this nature.
In the present case of Nippon Steel Corporation vs The Controller of Patents [April 17, 2026], the Delhi High Court once again found that the Controller had not discussed the manner in which the invention in question was obvious to a person skilled in the art. According to the Court, no reason whatsoever, by any standards, had been assigned by the Respondent for refusing the Nippon patent application.
Case of the Appellant
The appellant contended that the impugned order of the Controller must be quashed and set aside for the mere reason that it violated the principles of natural justice. They submitted that this was evident from reading the impugned order, wherein the respondent Controller merely reproduced the prior art documents D3, D2, and D1 extensively, but had not considered any of the submissions tendered by the appellant. According to the appellant, the respondent Controller had not given any reasons for refusing the patent application.
Analysis and Findings of the Court
Citing the earlier ruling in the Agriboard case, the Court emphatically stated that the Controller was expected to discuss the invention disclosed in the cited prior art as well as the claimed invention in the application under consideration. Thereafter, the Controller should have discussed the manner in which the invention in question would be obvious to a person skilled in the art. In the present case, the Respondent Controller had merely extracted extensively from the cited documents D1, D2, and D3. The Court observed that, so far as the analysis was concerned, the same appeared to be bereft of any application of mind or reasons which could reasonably be construed as sufficient for the purpose of arriving at the conclusion reached by the respondent Controller.
The Court ruled that, in the present case, there was no reasoning whatsoever, by any standard, assigned by the respondent Controller for refusing the patent application. According to the Court, though the impugned order stated that the response/arguments and other submissions had been fully considered, there was no reference to them at all. From a perusal of the impugned order, the Court found that the respondent Controller had not considered any of the submissions tendered by the appellant, nor had he given any reasons, which are sine qua non for an order of this nature to be upheld. It is apparent that the Assistant Controller/Controller is a quasi-judicial authority from whom it is expected that the orders shall contain reasons for either acceptance or refusal. Any order which has no reasoning cannot become the bedrock of a decision of this nature.
Decision of the Court
In that view of the matter, the Court was of the considered view that the impugned order was unsustainable in law and was quashed and set aside. Allowing the appeal, the Court remitted the matter back and directed de novo consideration of the entire subject application by a different Controller.
Concluding Remarks
In the Nippon case, the Court reiterated that it is expected from the Assistant Controller/Controller, who are quasi-judicial authorities, that their orders shall contain reasons for either acceptance or refusal. Any order which has no reasoning cannot become the bedrock of a decision of this nature. The Court also ruled that the Controller should discuss the manner in which the invention in question would be obvious to a person skilled in the art. According to the Court, simply stating that the submissions tendered by the applicant were considered is not sufficient to discharge the duty of the Controller, who is required to analyse the submissions vis-à-vis the objections raised before any order is passed rejecting a patent application.
The appellate courts, in several decisions, including the present case, have laid down the applicability of the principles of natural justice governing the decision-making process of quasi-judicial authorities such as the Patent Office. The sine qua non for any order of the Controller rejecting a patent application is assigning proper reasons for arriving at such a decision. Therefore, the Patent Office must be more vigilant in discussing the reasons before refusing any patent application, failing which the courts are more likely to consider such orders refusing patents as unsustainable in law and quash them.