By Jigyasa Pareek

Section 4 of the Patents Act, 1970, bars from patentability those inventions that relate to atomic energy falling within Section 20(1) of the Atomic Energy Act, 1962. The latter defines “atomic energy” as the energy released from atomic nuclei as a result of any process such as fission or fusion.

While the statutory bar is absolute in its operation, the manner of its invocation has repeatedly attracted judicial scrutiny. Courts across jurisdictions have consistently underscored that a rejection on the ground of Section 4 cannot be sustained in the absence of reason. This line of authority, spanning Merck Eprova AG (Calcutta High Court), Ceres Intellectual Property Company Limited (Bombay High Court), and ER Squibb & Sons, LLC (Delhi High Court) has firmly established that the invocation of the atomic energy bar does not dispense with the requirement of a reasoned order. Although the determination of whether an invention “relates to atomic energy” ultimately rests with the Central Government, the exercise of that determination must adhere to the standards of procedural fairness.

In this backdrop, the Bombay High Court’s recent decision in Huntington Alloys Corporation vs Union of India & Ors. [Writ Petition No. 2086 of 2021], reaffirms the position that even where the statute imposes an absolute bar, the decision to apply that bar must be reasoned, intelligible, and capable of scrutiny.

The case concerned a national phase application filed in 2010 for an invention entitled “Ultra Supercritical Boiler Header Alloy and Method of Preparation”. The invention related to a high-temperature nickel-cobalt-chromium alloy designed for use in ultra supercritical boiler header pipes used in power generation boilers (538°C-816°C).

Despite publication and the filing of a request for examination in 2012, the application remained unexamined by the Patent Office. In November 2020 the Deputy Controller forwarded a communication to the Department of Atomic Energy (DAE) expressing its prima facie view that the invention was patentable ineligible being an invention relating to atomic energy and sought directions under Section 20(6) of the Atomic Energy Act, 1962, on whether the application ought to be refused. In April 2021, the DAE issued a brief order stating that the invention “does relate to atomic energy” and directed refusal of the application.

These two communications resulted in the outright refusal of the patent application without disclosure of reasons, prompting the applicant to file the writ petition.

The Respondents justified the refusal by contending that, under Section 4 of the Patents Act read with Section 20 of the Atomic Energy Act, the Central Government’s determination in atomic energy-related patent applications is final. It was argued that the Patent Office has no scope to grant a hearing under Section 14 of the Patents Act in atomic energy-related patent applications as the final decision is to be taken by the DAE.

The principal issues before the Court were:

• Whether the refusal of the patent application was valid when the orders were unreasoned and non‑speaking.
• Whether DAE’s conclusion that the invention “relates to atomic energy” must be supported by reasons, despite the Central Government’s final authority.
• Whether the applicant’s statutory right under Section 65(2) of the Patents Act (to amend the complete specification) was violated by the absence of reasons.

In addressing these questions, the Court undertook a detailed examination of the statutory scheme of both the enactments. It noted that the exclusion under Section 4 of the Patents Act is anchored in the Statement of Objects and Reasons of the Atomic Energy Act, which underscores the imperative of ensuring the development, control, and use of atomic energy for the welfare of the people of India. The Central Government is vested with exclusive authority over the production, development, use, and disposal of atomic energy, as well as the conduct of research in any connected matters.

The Court also adverted to the enactment of the Sustainable Harnessing and Advancement of Nuclear Energy for Transforming India Act, 2025 (SHANTI Act), observing that while it relaxes the absolute embargo to consider grant of atomic energy-related patent for welfare purposes, it had not been brought into force as on the date of the decision (April 7, 2026).

A significant part of the Court’s reasoning turned on the evolution of Section 65 of the Patents Act. Prior to the 2005 amendment, Section 65 contemplated both refusal of pending applications and revocation of granted patents pursuant to directions from the Central Government. Under sub‑section (2), the Controller could permit amendment of the complete specification instead of refusal or revocation.

Post-amendment, Section 65 is restricted to revocation of the patent and the option of non-consideration of the application is not available. The Court gave a purposive explanation for why the language of Section 65 was altered in 2005: by the year 2005, the Atomic Energy Act casted the obligation on the applicant to communicate to the Central Government and seek permission if it had any reasons to believe that its invention related to atomic energy. Therefore, since there were no applications pending, Section 65 was restricted to revocation.

The Court, however, clarified that this modification cannot be read to mean that a patent must first be granted and only thereafter revoked, even if it squarely falls within the atomic energy bar. Such an interpretation would run contrary to Section 4 read with Section 20 of the Atomic Energy Act, which unequivocally prohibits the grant of patents for inventions relating to atomic energy.

Importantly, the Court underscores that what survives in Section 65(2) across both regimes (pre and post 2005) is the statutory possibility of amendment of the complete specification. In this backdrop, the Court held that had reasons been furnished in the impugned orders, the Petitioner could have availed the procedure under Section 65(2) of the Patents Act and amended the specification to address the perceived objection. The absence of reasons denied the applicant of the opportunity to amend its application to remove any alleged atomic energy linkage.

The Court observed that reasons are the “heartbeat” of any decision. Non-speaking orders, it held, undermine transparency, accountability, and the possibility of effective judicial review. An applicant is entitled to know why its invention is considered to fall within the atomic energy bar, particularly when it has expressly taken a position to the contrary in the specification. The Court emphasised that unreasoned orders reflect non‑application of mind, undermine fairness, and are liable to be set aside.

The Court expressly rejected the Respondents’ contention that the finality of the Central Government’s determination obviates the need to disclose reasons, observing that there is no justification for withholding them.

In view of the above, the Court set aside the impugned orders and directed the DAE to reconsider the matter and pass a reasoned order. Noting that the Petitioner did not insist for a personal hearing, the Court permitted the Petitioner to submit such material in addition to the specification, which was already submitted to the Patent Office.