Bombay High Court Quashes Patent Office Refusal And Directs Reconsideration Of ‘A MEDICAL THEURAPUTIC DEVICE’ Patent
Safiya Malik
The High Court of Bombay Single Bench of Justice Arif S. Doctor set aside the refusal of a patent application relating to a medical therapeutic device and directed the Patent Office to undertake a fresh assessment before a different Controller. The Court held that the rejection was issued without adhering to mandatory procedural steps under the Patents Act, including the requirement to communicate specific objections and allow the applicant an opportunity to address them. It observed that the order lacked adequate reasoning and failed to consider the material placed on record, leading to a finding of procedural irregularity. The Court therefore ordered reconsideration of the application and stayed the operation of its decision for two weeks.
The matter concerns a challenge to an order dated 18 February 2021 by which the Assistant Controller of Patents and Designs rejected a patent application filed for “A Medical Therapeutic Device.” The petitioner approached the Court seeking that the order be set aside. The rejection was issued under Section 15 of the Patents Act on the ground that the complete specification lacked sufficient disclosure as required under Section 10(4).
The petitioner contended that the statutory procedure mandated under Sections 14 and 15, read with Rules 28(1), 28(2), and 129, had not been complied with. According to the petitioner, during the hearing held on 11 May 2021, no deficiency regarding sufficiency of disclosure had been communicated and the hearing ended on a positive note. The petitioner submitted written submissions containing FAQs, credential files, treatment data, and explanations on the functioning of the invention. The petitioner claimed that none of this material was considered. It was also asserted that no opportunity was given to provide any further clarification, working examples, or amendments if the Controller deemed the disclosure insufficient.
The respondent opposed the petition, asserting that the petitioner had suppressed the filing and dismissal of a review petition. The respondent argued that the specification lacked experimental data, working models, supporting evidence, and technical particulars required under Section 10(3) and Section 10(4). It was contended that the alleged insufficiency was inherent and incapable of cure. Prior art references were relied upon to support the rejection. The respondent argued that the review order had attained finality and the challenge to the original order had become infructuous.
The Court recorded that “the scheme of the Patents Act, 1970, particularly Sections 14 and 15 read with Rules 28(1), 28(2) and Rule 129 of the Patent Rules, requires the Controller to adopt a corrective and consultative approach before refusing a patent application.” It stated that the statutory framework contemplates a two-stage process involving communication of objections, followed by an opportunity to cure them, and that a direct rejection would “defeat the very object and procedural safeguards provided for in the Patents Act.”
Regarding the facts, the Court observed that the application was uncontested and that the proceedings were non-adversarial. It recorded that “the Controller did not indicate any deficiency in disclosure, nor was any further objection raised in respect of the said Application” during the hearing. It further noted that the petitioner was justified in believing that all queries had been addressed. The Court stated that it was only in the impugned order that the Controller first held the disclosure insufficient.
On the requirement of a speaking order, the Court noted that the law requires an order rejecting a patent application to “set out the existing state of knowledge or the specific prior art relied upon; how the claimed invention is mapped to, or distinguished from such prior art; and why…the claimed invention is found to lack…sufficiency of disclosure.” It recorded that the impugned order merely stated conclusions without analysis and did not consider the FAQs and credential files. The Court pointed out that paragraph 23 incorrectly recorded that no experimental data had been furnished.
The Court also addressed the respondents’ reliance on prior art, stating that the Controller’s approach was contradictory since the order both claimed insufficient disclosure and simultaneously cited prior art allegedly mapping to the invention. The Court recorded that such reasoning was “plainly inconsistent.”
On the allegation of suppression of the review petition, the Court observed that although disclosure should have been made, the omission did not amount to material suppression. It stated that “there is no bar under the Patents Act on pursuing the remedies of review and appeal either simultaneously or sequentially.” It also noted that because the review was dismissed at the threshold, “the doctrine of merger does not apply.”
Regarding reliance on the Madras High Court decision, the Court recorded that it had “no bearing to the facts of the present case” since the petition challenged only the original order.
The Court directed that “The Order dated 18th August 2021 passed by Respondent No.2, Assistant Controller of Patents & Designs upon the Patent Application No. 201921036412 for grant of Patent titled ‘A MEDICAL THEURAPUTIC DEVICE’ is hereby set aside.”
“Patent Application No.201921036412 for grant of Patent titled ‘A MEDICAL THEURAPUTIC DEVICE’ is hereby remanded back for fresh consideration before another Controller.”
“The operation of the order shall remain stayed for a period of two weeks from today. Commercial Miscellaneous Petition accordingly stands disposed of.”
Advocates Representing The Parties
For the Petitioner: Prashant Shetty a/w Narayan Abhishek Singh, Aditya Chitale, Sumedh Ruikar & Saikiran Mergu i/by RKDewan Legal Services
For the Respondents: Mr. Niranjan Shimpi a/w Ms. Rivaa Kadam
Case Title: Hemant Karamchand Rohera v. Controller General of Patents and Designs & Anr.
Neutral Citation: 2025: BHC-OS:21342
Case Number: Commercial Miscellaneous Petition No. 11 of 2022
Bench: Justice Arif S. Doctor
