The Madras High Court, in its decision dated August 12, 2025, in Natural Medicine Institute ofZhejiang Yangshengtang Co. Ltd. vs Deputy Controller of Patents and Designs & Anr. [(T)CMA (PT) No.171 of 2023], examined the refusal of Indian Patent Application No. 6275/CHENP/2011 entitled “A Mordant and Hair Coloring Products Containing the Same.”.

The background of the matter reveals that the First Examination Report (FER) raised various objections including lack of novelty and lack of inventive step. In response, the Appellant filed a reply accompanied by an amended set of claims. The hearing notice maintained the objections, and a hearing was held on October 5, 2017. Following the hearing, email exchanges took place between the Appellant’s patent agent and the Controller regarding further amended claim sets.

On October 6, 2017, the Appellant’s agent sent an email to the Controller’s office attaching two amended claim sets: Claim set A with six claims corresponding to claims 1 to 6 of the rejected claims, and Claim set B with twelve claims corresponding to claims 7 to 13 of the rejected claims. On October 9, 2017, the Controller responded to this email with “Ok file.” The Appellant’s agent, interpreting this as acceptance of both claim sets, sent another email on October 10, 2017, confirming their understanding and indicated that the claims would be filed formally after client instructions. Subsequently, on October 17, 2017, the agent filed a combined set of claims derived from the two sets.

However, the impugned order dated December 14, 2017, rejected the patent application under Section 15 of the Patents Act on the sole ground that the Appellant’s agent had filed claims “contrary to” those which the Controller had approved.

Notably, the claimed invention had been granted patents in multiple jurisdictions including China, the United States, South Korea, Brazil, Malaysia, Japan, and subsequently by the European Patent Office (EPO).

The Controller tried to justify the rejection of the subject application by stating that the amendment sought was beyond the scope of the complete specification and original claims.

After reviewing the records, the Court held that the impugned order was unsustainable. The Court noted that the only reason provided in the order was that the claims filed on October 17, 2017, did not tally with the claims approved on October 9, 2017. However, the email correspondence, demonstrated that both sets of claims had been acknowledged as acceptable by the Controller. The Appellant’s decision to file a combined set, the Court remarked, was a consequence of that acknowledgment. Furthermore, The Court compared the rejected claims with the claim sets forwarded to the Controller via e-mail, and found that that claims matched.

The Court further emphasized that the Controller failed to provide any substantive reasoning. There was no analysis of novelty, inventive step, or Section 59 compliance. The Court also observed that while foreign patent grants do not bind the Indian Patent Office, the fact that the EPO and several other jurisdictions had granted patents for the same invention was a relevant factor that should have been considered.

Accordingly, the Court set aside the impugned order and remanded the matter for fresh consideration. It was directed that the Appellant may amend its claims in accordance with Section 59 and the Controller should issue a fresh hearing notice, substantially similar to the earlier one, and provide the Appellant with a reasonable opportunity of being heard.