Patent Office Must Read Complete Specification; Delhi High Court Revives Patent Application For Mechanical Folding Device
Sanchayita Lahkar
The High Court of Delhi Single Bench of Justice Manmeet Pritam Singh Arora, in a judgment dated 24 December 2025, set aside a Patent Office refusal of a patent application for “A Device For Folding Or Bending An Article” and sent the matter back for reconsideration. The Court directed the Assistant Controller to issue a fresh hearing notice, consider any amended claims and written submissions, and decide the application preferably within three months. It held that the refusal proceeded on a partial reading of the complete specification: the conclusions on claim clarity and inventive step were reached without adequately examining the dependent claims, drawings and detailed description, warranting a de novo assessment of inventive step.
The appeal arose from the refusal of a patent application relating to a device for folding or bending an article, filed by the applicant before the Patent Office. The application was rejected by the Assistant Controller of Patents and Designs on the ground that the claims did not sufficiently define the invention, lacked clarity, and did not disclose any inventive step. The rejection invoked provisions relating to claim definiteness, clarity, and inventive step under the Patents Act, 1970.
The applicant contended that the claims, when read along with dependent claims, detailed description, and drawings, adequately disclosed the invention and satisfied statutory requirements. It was also submitted that the prior art relied upon by the Patent Office was non-analogous and did not teach the claimed invention. The applicant further sought condonation of delay, attributing it to the time taken by the Patent Office in deciding the review petition.
The Patent Office opposed the appeal, arguing that once a review had been sought and rejected, an appeal against the original refusal was not maintainable. It was further contended that the claims were vague, failed to define essential technical features, and did not demonstrate any technical advancement over prior art. The dispute thus centred on claim clarity, compliance with statutory requirements, and assessment of inventive step.
The Court examined whether the claims complied with statutory requirements relating to clarity and scope. It observed that “every complete specification shall end with claims that define the scope of the invention for which the protection is claimed, and such claims should be clear, succinct and based on the disclosure made in the complete specification.”
On the objection that key terms were indefinite, the Court noted that “the said section in no way creates a distinction as to whether the definition should be in the independent or dependent claim.” It recorded that dependent claims could be read together with the principal claim to ascertain clarity and scope.
After analysing the dependent claims, the Court stated that “when the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ of the independent claim are read along with the dependent claims, it is clear that those terms are well defined in the claims of the complete specification.” It further found that the Patent Office had failed to consider the claims as a whole.
With respect to clarity under statutory requirements, the Court observed that “the reference numerals in claims of a complete specification aid in understanding the terms and features referred to therein.” Referring to the drawings and description, it concluded that “the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ are clearly described in the detailed description and the drawings.”
On inventive step, the Court noted a contradiction in the Patent Office’s reasoning. It recorded that “if the technical features of the claimed invention were unclear to the Controller, this Court fails to appreciate on what basis the Controller compared the technical features of the claimed invention to the prior arts.” The finding on lack of inventive step was described as “unreasoned and abrupt.”
The Court held that a fresh analysis was required and observed that “the unreasoned finding of the Controller that the features of the claim lack any technical advancement stands no merit and requires fresh analysis.”
The Court directed that “the impugned order is set aside, and the matter is remanded back to the Controller for a de-novo consideration of the objection under Section 2(1)(ja) of the Patents Act. The appellant may file an amended set of claims by characterising the technical features in Claim 1.”
The Assistant Controller was directed that “prior to deciding the matter afresh, a fresh hearing notice shall be issued clearly delineating the objections. The appellant shall have the liberty to file fresh written submissions. The Patent Office shall endeavour to decide the subject application in an expeditious manner, preferably within three months. The appeal stands disposed of in the aforesaid terms” and that “pending application stands disposed of.”
Advocates Representing the Parties
For the Appellant: Ms. Rajeshwari H., Ms. Garima Joshi, and Mr. Swami Chothe, Advocates
For the Respondents: Ms. Kangan Roda, SPC, with Mr. Tanishq Sharma, Advocate
Case Title: Resham Priyadarshini v. Assistant Controller of Patents and Designs & Anr.
Neutral Citation: 2025: DHC:12035
Case Number: C.A.(COMM.IPD-PAT) 9/2025
Bench: Justice Manmeet Pritam Singh Arora
