In PPC Broadband Inc. vs The Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 67/2024], the Delhi High Court set aside a patent application refusal order, reiterating two foundational tenets of Indian patent jurisprudence: Controllers must adjudicate the actual claim set pending on record, the objection on inventive step must be assessed by adhering to the five-step test laid down in F. Hoffmann-La Roche Ltd. vs Cipla Ltd.

The subject application related to a “Reel Enclosures” invention. During prosecution, the applicant responded to the First Examination Report (FER) by amending the claims and, following the hearing, further narrowed the claims pursuant to the Controller’s directions during the hearing to address the lack of inventive step objection. The applicant also introduced a “characterised in that” clause to clearly delineate its inventive contribution over the prior art. Despite these amendments, the Controller rejected the application by relying on features contained in the original claims, without analysing the amended claim set.

Before the Court, the justification offered by the Controller was that the post-hearing amendments were submitted without a formal Form 13 (Application for amendment of application/specification/claim). Consequently, the Controller argued those amendments could not be taken on record.

The Appellant contended that filing a Form 13 is required primarily for voluntary amendments and not for amendments submitted to address objections raised by the Controller in an FER or hearing notice. It was further contended that even if Form 13 were deemed mandatory, the Controller ought to provided formal finding on the inadmissibility of the amendments.

The Court found the impugned order unsustainable on several counts. It emphasized that when an applicant amends the claims, the Controller cannot base a refusal on deleted or unamended claims. The Court observed that the Controller had examined the unamended claims instead of the claims that were actually pending for consideration. The Court also noted that the impugned order contained no finding that the amendments were inadmissible, making their complete omission from the analysis erroneous.

The judgment also reiterated the proper methodology for determining inventive step. Relying on the decision in F. Hoffmann-La Roche and Tapas Chatterjee, the Court observed that step 4 of the five-step test mandates the Controller to identify the differences between the claimed invention and the cited prior art, not only similarities. It must be determined whether those differences involve anything beyond routine application of existing knowledge, and only thereafter must the Controller assess, per step 5, whether those differences would have been obvious to the person skilled in the art. Since the Controller’s reasoning focused almost exclusively on similarities while overlooking steps 4 and 5 of the inquiry, the inventive step analysis was found to be deficient. The Court also noted that the five steps cannot be followed randomly and must be followed in the laid down sequence.

Another aspect highlighted by the Court was the treatment of corresponding foreign grants. While recognising that patents granted in foreignjurisdictions are not binding on the Indian Patent Office, the Court observed that such grants may nevertheless carry persuasive value and could indicate the inventive merit, patentability, commercial interest, and industrial applicability of the claimed invention, and, therefore should not be ignored altogether. Noting that in the present case, the applicant had specifically brought the grant of the corresponding US and European patents to the Controller’s notice during prosecution, the Court held that the Controller was at least required to consider and address this submission in the impugned order. The complete omission to deal with this aspect reflected a failure to consider an issue raised by the applicant.

Accordingly, the Court set aside the refusal order and remanded the application for fresh consideration.