In JFE Steel Corporation vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 483/2022], the Delhi High Court set aside the refusal of patent application number 610/DELNP/2015 and remanded the matter to the Patent Office on the ground that the Controller had failed to adjudicate all objections raised in the hearing notice.

The subject application had been refused on the grounds of Section 10(4)(a) read with Section 10(4)(c) of the Patents Act. Notably, the hearing notice had also raised objections concerning lack of novelty under Section 2(1)(j), lack of inventive step under Section 2(1)(ja), and non-patentability under Section 3(d). Despite these objections forming part of the hearing notice and extensive submissions having been made by the Appellant in response thereto, the Controller expressly declined to examine these issues after sustaining the objections under Section 10(4), observing that “a decision on novelty / inventive step is not required to be taken or can’t be taken”.

The Delhi High Court found this approach to be unsustainable. Relying upon its earlier decisions in Adama Makhteshim Ltd. vs The Controller of Patents and Medilabo RFP Inc. vs The Controller of Patents, the Court reiterated that patent applications must be adjudicated as a whole and that the Controller ought to decide all objections raised in the hearing notice. The Court observed that refusal orders which address only one or more objections while leaving other objections undecided create unfairness and unnecessarily prolong the patent grant process.

The Court placed emphasis on the limited term of patent protection and observed that if appellate courts are compelled to remand matters every time certain objections remain undecided, “possibly, the entire patent term may get consumed in this process, which is clearly avoidable”.

The Court clarified that while exercising appellate jurisdiction under the Patents Act, it cannot itself undertake a first-instance technical determination on issues such as novelty and inventive step where the Controller has rendered no findings. The Court observed that it cannot place itself in the position of the Controller nor assume the role of a person skilled in the art for independently adjudicating such technical objections in the absence of reasoned findings from the Patent Office.

The Court also drew an analogy with civil procedure, observing that just as civil courts ordinarily decide all framed issues to facilitate effective appellate review, the Controller too should render findings on all objections raised and contested during prosecution. The Court further noted that unlike the Code of Civil Procedure (Order XLI), there is no provision or jurisdiction with the Appellate Court in the context of the Patents Act for it to remand the matter to Controller for issues not determined. This makes comprehensive first-instance adjudication by the Controller even more important.

Accordingly, the Court set aside the impugned order and remanded the matter for fresh consideration on all objections. The Court also directed that a copy of the judgment be placed before the Controller General of Patents and Designs for necessary administrative action.