In the case ofAtlas Copco Airpower Naamloze Vennootschap vs The Controller General of Patents and Designs & Anr. [IPDPTA/12/2022], the Calcutta High Court dealt with the procedural irregularity of introducing new prior art references for the first time at the stage of hearing under Section 14 of the Patents Act, 1970. The Court held that such a practice violates the mandate of the Patents Act and the applicant’s right to a fair hearing.

In the instant case, the Appellant’s patent application number 3305/KOLNP/2010 was refused by the Controller on the ground of lack of inventive step. Notably, the hearing notice issued by the Controller cited a new prior art reference that had not been mentioned in the First Examination Report (FER), and no analysis or explanation was provided as to its relevance to the claimed invention.

Moreover, the Controller failed to provide a reasoned basis for concluding that the invention would have been obvious to a person skilled in the art. The impugned order merely reproduced the cited prior art references without demonstrating any nexus between the disclosures and the conclusion of lack of inventive step.

The Court reprimanded the Controller for not granting the Appellant a real opportunity to deal with the prior art references. The Court observed that “reliance on the prior art in the hearing notice is in violation of the mandate of the Act”.

The matter was accordingly remanded to the Patent Office for fresh consideration.