In Wirtgen GMBH vs Controller General of Patents [C.A.(COMM.IPD-PAT) 306/2022], the Delhi High Court set aside the refusal of patent application number 2874/DEL/2010, entitled “Bit Holder and Base Part for Receiving a Bit Holder”, holding that the impugned order suffered from both procedural and analytical infirmities. The judgment is significant for its clear articulation of the standards governing patent examination, particularly in relation to the requirement of reasoned analysis under Section 2(1)(ja) and adherence to principles of natural justice in assessing compliance with Section 10(4)(c) of the Patents Act, 1970.

The claimed invention pertained to a structural configuration of a bit holder and a base part used in milling or mining machines, where the arrangement of supporting and bearing surfaces at specific angles, particularly the formation of an obtuse angle between axes, was claimed to enable improved load distribution and durability under high stress conditions.

The Controller had refused the application under Sections 2(1)(ja) and 10(4)(c), concluding that the claims lacked inventive step in view of prior art documents D1-D4, and that the claims failed to clearly define the scope of the invention. However, the Court found both limbs of this reasoning to be unsustainable.

On the issue of definiteness under Section 10(4)(c), the Court undertook a careful comparison of the objections raised in the First Examination Report, the hearing notice, and the impugned order. It noted that several objections forming the basis of refusal, such as alleged vagueness in terms like “transverse central plane”, “extend locally” and “in front of the longitudinal axis” as well as the purported overlap between certain claims, had not been raised at any prior stage of prosecution. The Court specifically rejected the Controller’s contention that mere reference to the claims containing said terms in the hearing notice was sufficient. The Court remarked that “the technical objections, particularly those relating to the scope of claims under Section 10(4)(c) of the Patents Act, must be clearly communicated to the applicant at the examination stage”.

The Court noted that the introduction of these objections for the first time in the refusal order effectively deprived the applicant of an opportunity to respond, amend, or clarify the claims. In doing so, the Court reaffirmed that patent examination is an interactive process, structured by Sections 12 and 14 of the Act, where objections must be communicated in advance to enable the applicant to cure defects through amendment or clarification. The failure to do so, the Court held, violates the principles of natural justice, particularly the rule of audi alteram partem. The Court also rejected the Controller’s approach of isolating claims from the specification, reiterating that claims must be read in light of the complete specification, consistent with Sections 10(4)(c) and 10(5), as well as precedents such as AGFA NV and Resham Priyadarshini.

Reinforcing the statutory scheme, the Court noted that objections are required to be first communicated through the FER under Section 12, and, where necessary, clarified through a hearing notice. A deviation from this structured process, particularly by introducing new grounds at the stage of refusal, renders the decision procedurally infirm.

On inventive step, the Court found the Controller’s reasoning to be analytically deficient. While the impugned order asserted that the teachings of D4 could be combined with D1-D3 to arrive at the claimed invention, it failed to undertake the five-step test and explain how and why a person skilled in the art (PSITA) would be motivated to make such a combination. There was no feature-by-feature comparison, nor any articulation of the technical motivation that would lead to the specific geometric arrangement claimed by the applicant.

The Court emphasized that a mere assertion of combinability is insufficient to sustain a finding of obviousness. Relying on the framework laid down in F. Hoffmann-La Roche vs Cipla and reaffirmed in Tapas Chatterjee vs Controller of Patents, the Court reiterated that a proper inventive step analysis must demonstrate, through reasoned analysis, how the prior art document leads the PSITA to the claimed invention without inventive ingenuity. In the absence of such reasoning, the conclusion of lack of inventive step could not be sustained.

Accordingly, the Court set aside the impugned order and remanded the matter for de novo consideration. It directed the Patent Office to issue a fresh hearing notice clearly demarcating all objections, including those newly introduced, and to afford the applicant an opportunity to respond, amend the claims, and make submissions.