Bombay High Court Sets Aside Patent Rejection Based Solely On Section 10(4); Remands JFE Steel’s Application For Fresh Consideration On Merits

Bombay High Court Sets Aside Patent Rejection Based Solely On Section 10(4); Remands JFE Steel’s Application For Fresh Consideration On Merits

Introduction

The present Commercial Miscellaneous Petition was filed by the Petitioner challenging an Order dated 11 January 2023 passed by the Respondent–Controller of Patents & Designs under Section 15 of the Patents Act, 1970, refusing Patent Application No. 115/MUMNP/2015. The challenge primarily concerns the legality of rejection of the patent application solely on the ground of non-compliance with Section 10(4) of the Patents Act, 1970, without examination of substantive patentability requirements.

Factual Background

The Petitioner had filed Patent Application No. 115/MUMNP/2015 seeking protection for its invention. By the impugned Order dated 11 January 2023, the Controller refused the application under Section 15 of the Patents Act, 1970, on the ground that the specification failed to comply with the requirements of Section 10(4), which pertains to sufficiency of disclosure.

It was the Petitioner’s case that the rejection was confined exclusively to alleged non-compliance with Section 10(4) and that there was no finding in the impugned Order that the invention lacked novelty or inventive step—two essential criteria for patentability under the Act. The Petitioner further pointed out that patents in respect of the same invention had been granted in multiple foreign jurisdictions, including the United States, Europe, China and Japan.

Procedural Background

Aggrieved by the refusal of its patent application, the Petitioner approached the Bombay High Court under its Ordinary Original Civil Jurisdiction in its Commercial Division. Learned counsel for the Petitioner argued that the Controller had erred in law by rejecting the application solely on the ground of insufficiency of disclosure, without adjudicating upon the substantive requirements of novelty and inventive step.

Reliance was placed upon prior decisions of the Bombay High Court in Hemant Karamchand Rohera v. Controller General of Patents & Designs & Anr. and Qualyst Transporter Solutions LLC v. The Assistant Controller, wherein it was held that rejection of a patent application solely on the ground of Section 10(4), without examination of patentability on merits, is unsustainable.

Issues

1. Whether the Controller was justified in rejecting the patent application solely on the ground of non-compliance with Section 10(4) of the Patents Act, 1970.

2. Whether the absence of findings on novelty and inventive step rendered the impugned Order legally unsustainable.

3. Whether the matter required remand for fresh consideration in accordance with law.

Contentions of the Parties

The Petitioner contended that the impugned Order was legally flawed as it did not contain any independent findings on the core requirements of patentability, namely novelty and inventive step. It was submitted that the Controller’s decision was founded entirely on an alleged failure to satisfy the requirement of sufficiency of disclosure under Section 10(4), without examining whether the invention met the statutory tests under the Act.

The Petitioner further argued that patents for the same invention had been granted in several foreign jurisdictions. While acknowledging that foreign grants are not determinative under Indian law, it was submitted that such grants are nevertheless relevant considerations, particularly where the rejection is based solely on sufficiency of disclosure, a requirement common across patent regimes. The Respondent supported the impugned Order.

Reasoning and Analysis

Upon perusal of the impugned Order, the Court observed that the rejection was founded entirely on the alleged failure to meet the requirement of sufficiency of disclosure under Section 10(4) of the Patents Act, 1970. The Order did not contain any analysis or findings regarding novelty or inventive step, which are substantive statutory prerequisites for grant of patent protection.

The Court found merit in the Petitioner’s submission that rejection solely on the ground of Section 10(4), without addressing the core patentability criteria, was unsustainable in law. The absence of any finding that the invention lacked novelty or inventive step rendered the impugned Order deficient in reasoning.

The bench of Justice Arif S Doctor further noted that although grant of patents in foreign jurisdictions is not determinative of patentability under Indian law, such grants are relevant considerations. In particular, where the rejection is based solely on sufficiency of disclosure, and patents have been granted in jurisdictions with comparable disclosure requirements, the Controller ought to have meaningfully addressed this aspect. The failure to consider this factor further underscored the inadequacy of the impugned Order.

Decision

In view of the foregoing, the Court set aside the impugned Order dated 11 January 2023. The matter was remanded for fresh consideration by a different Controller, who was directed to examine the application afresh in accordance with law, including all statutory requirements, and to pass a reasoned order.

The fresh decision was directed to be taken, as far as practicable, within a period of four weeks from the date of the Order, subject to administrative exigencies. The Commercial Miscellaneous Petition was accordingly disposed of, with no order as to costs.

In this case the petitioner was represented by Mr. Gopal Trivedi a/w Mr. Chinmay M Page, Mr. Ashitosh Pawar, Advocates. Meanwhile the respondent was represented by Ms Leena Patil, Advocate.