MEDIPACK GLOBAL VENTURES PRIVATE LIMITED v. ASSITANT CONTROLLER OF PATENTS AND DESIGNS
Patent Refusal Set Aside for Violation of Natural Justice and Failure to Pass a Reasoned Speaking Order Addressing Novelty and Inventive Step.
Court: Bombay High Court
Citation: 2026:BHC-OS:7258
Decision Date: 23-03-2026
List of Laws
The Patents Act, 1970; The Patents Rules, 2003; Principles of Natural Justice; Patent Office Manual of Practice and Procedure; Administrative Law - Speaking Orders
- Facts: The Petitioner, Medipack Global Ventures Private Limited, filed a patent application for an invention titled "A Syringe With Breakable Plunger", designed as a single-use safety syringe to prevent infection spread. Following the First Examination Report (FER), which raised objections regarding novelty and inventive step, the Petitioner filed a detailed response and amended its claims. A subsequent hearing notice was issued, which notably restricted the scope of the hearing only to the objection regarding "inventive step" under Section 2(1)(ja) of the Patents Act, 1970, effectively waiving the novelty objection. However, the Assistant Controller of Patents and Designs eventually issued an order refusing the patent application on the dual grounds of lack of novelty and lack of inventive step. The Petitioner challenged this order, asserting it was a non-speaking order that lacked independent reasoning and violated principles of natural justice.
- Procedural Posture: The matter reached the Bombay High Court as a Commercial Miscellaneous Petition filed under Section 117A of the Patents Act, 1970, seeking to set aside the refusal order dated 4th March 2024 passed by the Assistant Controller of Patents and Designs.
- Issue: Whether a patent refusal order is sustainable if it adjudicates on grounds not raised in the hearing notice and fails to provide independent reasoning or a structured analysis of the claimed invention against prior art.
- Holding: No, the order is not sustainable. The Court set aside the impugned order and remanded the matter for fresh consideration by a different Controller.
- Reasoning: The Court reasoned that the Controller acted in "complete breach of the principles of natural justice" by rejecting the application on the ground of novelty after the hearing notice had confined the scope solely to inventive step. Furthermore, the Court found the order to be "entirely unreasoned" and a "non-speaking order". It noted that the Controller merely reproduced the Petitioner’s claims and portions of prior art verbatim without mapping specific elements or explaining how the invention was anticipated or rendered obvious. Relying on Delhi High Court precedents, the Court emphasized that since orders under Section 15 are appealable under Section 117A, they must be "reasoned and speaking" and deal systematically with each objection. The Controller's failure to follow the "Patent Office Manual of Practice and Procedure", which requires a holistic assessment of the invention rather than mere "mosaicing" of individual features, further vitiated the order.
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