In Medipack Global Ventures Private Limited vs Assistant Controller of Patents and Designs [COMMP(L) 19258 of 2024], the Bombay High Court set aside a patent refusal order on the ground that it was a non-speaking order passed in violation of principles of natural justice. The decision assumes significance for its criticism of the continuing practice of mechanical and unreasoned patent refusal orders and for reiterating that mere reproduction of claims and prior art cannot substitute reasoned adjudication.

The dispute arose from refusal of patent application number 202221047021, entitled “A Syringe With Breakable Plunger”, relating to a single-use safety syringe intended to prevent reuse and consequent transmission of infections. While the First Examination Report had raised objections relating to novelty and inventive step, the subsequent hearing notice was confined only to inventive step under Section 2(1)(ja). Despite this, the impugned order ultimately refused the application on the grounds of both novelty and inventive step.

The Bombay High Court found this approach fundamentally unsustainable. The Court held that once the hearing notice had omitted the novelty objection, the Controller could not revive and decide the issue of novelty without affording the applicant an opportunity to respond.

Equally significant were the Court’s observations on the complete absence of reasoning in the impugned order. The Court noted that the Controller had merely reproduced portions of the applicant’s claims and extracts from prior art documents before concluding that the applicant’s submissions were “not persuasive”. The order contained no analysis explaining how the amended claims were anticipated or rendered obvious from the cited prior art. The Court emphasised that reproduction of prior art and claims, without any mapping of claim elements, assessment of distinguishing features, or explanation of why a person skilled in the art would arrive at the claimed invention, does not constitute a valid inventive step analysis.

The Court further observed that the Patent Office Manual requires inventive step to be assessed holistically by considering the invention as a whole in light of prior art as a whole, and not through a fragmented or conclusory approach.

Importantly, the Court referenced the Delhi High Court’s decision in Huhtamaki OYJ vs Controller of Patents regarding the “endemic problem” of non-speaking and copy-paste patent refusal orders. In particularly sharp observations, the Court remarked that the Delhi High Court’s earlier concerns appear to have “fallen on deaf ears”, as the same systemic problem continues to persist.

Reiterating that reasons are the “heart and soul” of any appealable order, the Court held that patent refusals must systematically deal with each objection and the applicant’s responses thereto.

In view of the foregoing, the Court set aside the refusal order and remanded the matter for fresh consideration before a different Controller.