By Jigyasa Pareek

The Delhi High Court in its recent decision in the case of Marelli Europe S.P.A. vs Deputy Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 21/2024, decision dated April 16, 2025] set aside an order of refusal issued by the Controller. The Court held that the introduction of new material and allegations of suppression at the appellate stage cannot be allowed to sustain the impugned order. The Court also reaffirmed the position that recording of reasoned decision is the basic element of natural justice.

In the instant case, the Appellant challenged the refusal of patent application number 3865/KOLNP/ 2007, entitled ‘Hydraulic Servo-Control of a Servocontrolled Gearbox’. The application was refused on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. The impugned order cited five prior art documents, however it provided no analysis explaining how the claimed invention lacked inventiveness in light of these references.

The Appellant highlighted that the Controller reproduced excerpts from the cited documents without undertaking the three-element analysis underscored in Agriboard International LLC vs Deputy Controller of Patents and Designs [2022 SCC OnLine Del 940]: namely, considering the teaching of the prior art, considering the invention disclosed in the subject application, and explaining how the latter would have been obvious to a person skilled in the art. The Appellant argued that refusing an application on the ground of lack of inventive step without assigning any reason violates the principles of natural justice.

The Court concurred with the arguments advanced by the Appellant and noted that the Controller failed to analyse the detailed submissions of the Appellant that distinguished the cited prior art documents from the claimed invention. The Court referred to the decision in Art Screw Co. Ltd. vs Assistant Controller of Patents and Designs [2022/DHC/005571] wherein it was observed that a finding on lack of inventive step is a serious finding that adversely impacts the inventive integrity of the applicant, and, therefore, must be arrived at after considering a variety of factors and should be supported by cogent reasoning. Accordingly, the Court held that the impugned order was devoid of any substantive reasoning and had been passed in a mechanical manner.

Notably, during the appeal proceedings, in the counter-affidavit, the Controller attempted to bolster the refusal of the subject application by alleging that new material had come to his knowledge after the issuance of the impugned order and that the Appellant had failed to disclose the same.

The Court unequivocally rejected this approach, noting that “there is no reference to such additional material or the element of suppression in the impugned order” and these averments were made for the first time. The Court clarified that the correctness of the impugned order must be assessed on the basis of the reasons recorded therein, and not on the basis of subsequent material relied on or allegations made at the appellate stage. The Court reiterated that an order cannot be improved by the averments made in the counter affidavit.

In view of the foregoing, the Court remanded the matter to the Patent Office with the direction that if any new material has come to the Controller’s knowledge, it must be shared with the Appellant in the hearing notice, so that the Appellant has an opportunity to respond.

This decision makes it clear that new material cannot be introduced for the first time at the appellate stage to justify a refusal. Any document or allegation relied upon by the Controller must be part of the order, and the applicant must be given a fair chance to address it. Allowing post facto justifications undermines the principles of natural justice and cannot be entertained.