Patent Rejection Based on "Hindsight" and "Conjecture" Quashed: Calcutta High Court Orders Rehearing Over Failure to Provide Reasoned Order and Statutory Compliance
Safiya Malik
The Intellectual Property Rights Division of the High Court at Calcutta, a Single Bench of Justice Ravi Krishan Kapur set aside a rejection order passed by the Controller of Patents, Designs and Trademarks. The court directed a fresh hearing on the patent application concerning an electrical sub-assembly intended for use in electric and hybrid vehicles.
The court recorded that the impugned order dated 28 October 2024 was passed without issuing a Second Examination Report and without providing adequate reasoning to justify the conclusion of lack of inventive step under section 2(1)(ja) of the Patents Act, 1970. The court remanded the matter to a different Officer, with the directive that the rehearing be concluded within eight weeks.
The case involved an appeal by Advanced Electric Machines Group Limited against an order rejecting their patent application for an electrical sub-assembly aimed at improving the performance and manufacturability of Switched Reluctance Machines (SRMs) used in electric and hybrid vehicles.
The appellant asserted that the invention reduced the number of electrical components, particularly busbars, facilitating a more compact and manufacturable design. It was contended that the reduction in components led to improved ease of assembly and commercial viability of SRMs for automotive applications.
The rejection of the application was based on the ground that the claimed invention lacked inventive step under section 2(1) (ja) of the Patents Act. The appellant challenged the order on multiple grounds:
- The order lacked reasoning and merely reproduced extracts from hearing notices without addressing the submissions or evidence provided by the appellant.
- A new prior art document (D3), a Japanese publication, was cited during the hearing without providing an English translation, in violation of the Patents Rules, 2002.
- No Second Examination Report was issued, although amendments were made to the application, and D3 was introduced for the first time.
- The respondent’s interpretation of the figures and configuration in the invention was erroneous and based on hindsight analysis.
- The Controller had compared a star configuration (from figure 7 of D3) with a delta configuration (figure 5 of the invention) without justifying why a skilled person would make such a transformation.
- The conclusions about a change in the scope of the invention due to a typographical error were unsupported by evidence.
- No discussion was offered on earlier cited prior arts D1 and D2 despite references in the hearing notice.
The appellant referred to various decisions of the High Courts to support the contention that an assessment of inventive step must involve a structured and reasoned approach. These included:
- Telefonaktiebolaget LM Ericsson (PUBL) vs. The Controller of Patents and Designs (Order dated 29.11.2021, AID/8/2021)
- Guangdong OPPO Mobile Telecommunications Corp. Ltd. vs. The Controller of Patents and Designs (Order dated 13.06.2023, AID 20 of 2022)
- Agriboard International LLC. vs. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 940)
- Sysmex Corporation vs. The Controller of Patents and Designs (ΟΑ/25/2020/PT/KOL; Order dated 18.04.2023, IPDPTA/28/2023)
Justice Kapur recorded that the impugned order was procedurally deficient and lacked substantive reasoning. The order "merely reproduced the extracts from the hearing notices and failed to consider and discuss the submissions of the appellant."
It was observed that "there has also been no discussion of the objections raised in the F.E.R. or the hearing notices" and that the Controller proceeded on an "erroneous interpretation and misunderstanding of the subject invention."
Regarding the Japanese prior art document D3, the court noted: "In this context, the law categorically requires a party to make available English translations in all proceedings where documents are in a foreign language." The court referred to Rules 20(3)(b), 20(5), 20(6), 21(2) and 61(2) of the Patents Rules, 2002, which mandate such translations.
The court further found that the comparison between the figures in the subject invention and those in D3 was without adequate justification. The Controller's finding that the invention was obvious due to a hypothetical redrawing of figures was recorded as flawed: "The impugned order is based on surmises and conjectures and this is an inherent flaw in the impugned order."
Additionally, the finding that the scope of the invention had shifted due to amendments was found to be unsupported: "The finding in the impugned order that in causing amendments to the first written submission there is a change in scope of the invention is unreasoned and unsubstantiated."
The High Court concluded that the rejection order was unsustainable. It directed that:
"The matter is remanded to a different Officer for hearing afresh. The above exercise is to be completed within a period of eight weeks from the date of passing of this order."
The court clarified that:
"There has been no adjudication on the merits of the case. All questions are left open to be decided in accordance with law."
Advocates Representing the Parties
For the Petitioner: Subhotosh Majumdar, Mitul Dasgupta, K. K. Pandey, Teesham Das, Pooja Sett and Mallika Bothra, Advocates
For the Respondents: Dhruv Surana and Sumita Sarkar, Advocates
Case Title: Advanced Electric Machines Group Limited vs. The Controller of Patents Designs and Trademark
Case Number: IPDPTA/3/2025
Bench: Justice Ravi Krishan Kapur
[Read/Download order]
