In a significant decision clarifying the procedural obligations of the Patent Office, the Bombay High Court has held that a patent application cannot be rejected solely on procedural or disclosure objections under Section 10(4) of the Patents Act, 1970, without an independent assessment of core patentability requirements such as novelty and inventive step.

The decision in JFC Steel Corporation vs The Controller of Patents & Designs [Commercial Miscellaneous Petition No. 52 of 2025] reinforces established jurisprudence: the Indian Patent Office must conduct a holistic, substantive evaluation before slamming the door on an applicant.

The Petition challenged the refusal of patent application number 1155/MUMNP/2015, contending that the refusal was bad in law.

The application was refused solely on the ground of insufficiency of disclosure under Section 10(4), bypassing the examination on the merits of novelty or inventive step. The Petitioner relied on the Bombay High Court’s decisions in Hemant Karamchand Rohera vs Controller and Qualyst Transporter Solutions LLC vs Assistant Controller, wherein it was held that a standalone rejection under Section 10(4) is unsustainable.

The Court concurred with the Petitioner and observed that the impugned order contained no independent analysis of the statutory requirements of patentability viz. novelty or inventive step. In the absence of such findings, the Court held, the refusal was unsustainable.

The Court also noted that the same invention had been granted patents in jurisdictions including the United States, Europe, China, and Japan. While clarifying that foreign grants are not determinative of patentability under Indian law, the Court held that they remain a relevant consideration, particularly when the rejection is based solely on the ground of insufficiency of disclosure. The Court held that sufficiency of disclosure is a common patentability requirement in global patent prosecution. The Controller’s failure to consider foreign grants in such circumstances demonstrate inadequacy of the reasoning.

Accordingly, the Bombay High Court set aside the impugned order and remanded the matter for fresh consideration before a different Controller.