In Resham Priyadarshini vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 9/2025] the Delhi High Court addressed three issues: (i) refusals on the grounds of insufficiency and lack of clarity under Sections 10(4)(c) and 10(5) of the Patents Act, 1970; (ii) the inconsistency of holding claims to be both unclear and non-inventive; and (iii) the maintainability of an appeal and condonation of delay where a review petition had been unsuccessfully pursued before the Patent Office.

The subject patent application (number 202011013257, entitled “A Device for Folding or Bending an Article”) was refused by the Controller under Section 15 of the Patents Act on the grounds that the claims did not sufficiently define the scope of protection, were unclear and not fairly based on the specification, and disclosed no technical advancement over the cited prior art references.

Aggrieved, the applicant invoked the review jurisdiction of the Controller under Section 77(1)(f). The review petition, accompanied by a request under Rule 137 seeking condonation of delay, was however dismissed as time-barred. Thereafter, the applicant approached the High Court under Section 117A, along with an interlocutory application under Section 5 of the Limitation Act read with Section 117A(4) of the Patents Act and Section 151 CPC, seeking condonation of a delay of 652 days in filing the appeal. The explanation offered was that the delay was occasioned by the pendency of the review proceedings before the Patent Office.

The Controller opposed the appeal on both maintainability and limitation. It was argued that once the applicant had elected to pursue a review under Section 77(1)(f), the statutory scheme did not permit an appeal against the original refusal order under Section 15. Permitting such an appeal, according to the Controller, would render the review mechanism redundant and allow piecemeal challenges. It was further contended that the appeal was time-barred, and that even the review petition itself had been filed without being accompanied by a request on Form 4 as required under Rule 130 of the Patent Rules.

The Court did not enter into a detailed adjudication on the alleged procedural infirmities surrounding the maintainability of the appeal in view of the review petition. Accepting the Appellant’s explanation that the delay arose due to the time taken by the Patent Office to decide the review, the Court held that sufficient cause had been shown and condoned the delay and examined the merits of the refusal order.

Section 10(4)(c): Defining the Scope of the Invention

In the impugned order, the Controller had concluded that the expressions ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ in independent claim 1 were insufficiently defined, rendering the scope of protection indeterminate.

The Court clarified that Section 10(4)(c) merely requires that the claims, read as a whole, define the scope of the invention. The statute does not mandate that every technical feature be exhaustively defined within the independent claim itself.

Drawing upon the Manual of Patent Office Practice and Procedure and comparative guidance from the European Patent Office Guidelines, the Court emphasised that dependent claims are an integral part of claim construction. In the present case, dependent claims 3 and 11 expressly defined the said terms. Consequently, the refusal under Section 10(4)(c) was held to be unsustainable.

The Court also permitted the Appellant to amend the claims to the satisfaction of the Controller.

Section 10(5): Clarity, Succinctness, and Fair Basis

The Court then turned to the objection under Section 10(5), which requires claims to be clear, succinct, and fairly based on the specification.

The Court adopted a holistic reading of the patent document and underscored that clarity is assessed in light of:

• the detailed description; and
• the drawings (which form part of the specification as per Section 10(2)); the consistent use of reference numerals linking claims to specific embodiments aid in understanding the terms and features referred to therein.

By analysing the drawings and corresponding descriptive paragraphs of the complete specification, the Court noted that the impugned terms were repeatedly explained, illustrated, and contextualised. For a person skilled in the art, the scope and operation of the claimed mechanisms were readily ascertainable.

Accordingly, the Court held that the claims satisfied the clarity and disclosure requirements of Section 10(5), and the refusal on this ground was liable to be set aside.

Section 2(1)(ja): The Contradiction in the Inventive Step Analysis

Here, the Court identified a fundamental contradiction in the Controller’s reasoning. On the one hand, the Controller had held that the claims were insufficiently described and that the technical features of the invention could not be properly ascertained. On the other hand, the Controller proceeded to conclude that those very features disclosed no technical advancement over the prior art. If the technical features of the invention were indeed unclear, it was logically untenable for the Controller to have compared those very features with the prior art to assess inventive step and conclude that the claimed invention did not demonstrate any technical advancement over the prior art references.

The Court observed that the finding under Section 2(1)(ja) was abrupt, unreasoned, and liable to be set aside. Reaffirming the settled five-step test for obviousness laid down in F. Hoffmann-La Roche vs Cipla and reiterated in Tapas Chatterjee vs Controller of Patents, the Court noted that a fresh analysis was warranted.

Accordingly, the impugned order was set aside and the matter was remanded to the Patent Office for de novo consideration.