Bombay High Court Insists on Fair Play: Patent Controllers Cannot Reject Without First Pointing Out the Flaws

In a significant ruling that strengthens procedural safeguards for inventors, the Bombay High Court has set aside an order rejecting a patent application for a medical therapeutic device. Justice Arif S. Doctor held that patent controllers must follow a clear consultative process before refusing applications, ensuring applicants receive specific objections and a genuine chance to address them.

The decision in Hemant Karamchand Rohera v. Controller General of Patents and Designs & Anr. underscores that rejections cannot rest on cryptic conclusions or uncommunicated deficiencies.

A Medical Device Invention and Its Rocky Path Through Examination

Hemant Karamchand Rohera filed Patent Application No. 201921036412 seeking protection for “A MEDICAL THERAPEUTIC DEVICE.” After an oral hearing that appeared to conclude positively, the Assistant Controller rejected the application in 2021, primarily citing insufficient disclosure under Section 10(4) of the Patents Act, 1970.

Rohera challenged this through a Commercial Miscellaneous Petition, arguing that the refusal blindsided him. No prior communication had flagged concerns about sufficiency, nor was he given an opportunity to provide working examples, FAQs, or user test data that he later submitted.

This case highlights the tension between an applicant’s right to fair procedure and the Controller’s duty to rigorously examine patentability.

Petitioner’s Challenge: A Process Denied and an Order Without Reasoning

Counsel for the petitioner submitted that the statutory framework under Sections 14 and 15, read with the Patent Rules, demands a sequential approach: communicate objections, grant a hearing, allow amendments if needed, and only then refuse.

Instead, the Controller passed a brief order that recorded conclusions without analysing prior art references or addressing the detailed post-hearing submissions, including credential files and treatment data. The petitioner also noted an internal contradiction: the order simultaneously treated the disclosure as insufficient while citing multiple prior art documents that supposedly anticipated the same invention.

Controller’s Position: Focus on Inadequate Enablement

The respondents defended the rejection, asserting that the specification lacked supporting data or working examples necessary to enable a skilled person to reproduce the claimed therapeutic effects. They argued that no opportunity for further clarification was required when the deficiency struck at the root of sufficiency.

They further contended that the petition suffered from suppression because a review petition had been filed and dismissed, rendering the present challenge infructuous.

How the Court Weighed Natural Justice Against Patentability Concerns

Justice Doctor systematically dismantled these defences. The Court stressed that patent proceedings are non-adversarial and that controllers must act in a corrective, consultative manner. When a deficiency such as insufficient disclosure is perceived, the Controller is duty-bound to invite clarifications or additional material rather than reject outright.

Citing precedents from the Delhi High Court, the judgment clarified the minimum requirements of a speaking order: it must identify relevant prior art, map the invention against it, and explain why the claimed subject matter fails statutory tests. Merely recording final conclusions without such analysis violates established principles.

The Court found the impugned order doubly flawed—both for failing to mention the petitioner’s post-hearing material and for its contradictory logic. It rejected arguments that patentability objections under Section 3 could be considered before the foundational question of sufficiency was properly addressed after giving the applicant a chance to respond.

Key Observations from the Bench

Justice Doctor’s reasoning contains several pointed observations worth quoting directly:

> “A direct rejection without following this process defeats the very object and procedural safeguards provided for in the Patents Act.”

> “It was only for the first time in the Impugned Order that the Controller held that the disclosure fell short of sufficiency…”

> “On the one hand, the Controller has rejected the said Application on the ground that the specification suffers from insufficient disclosure… However, on the other hand, the Controller has simultaneously cited multiple prior art references which, according to him, sufficiently disclose or explain the very same invention/device.”

> “Issues of patentability, novelty, and inventive step would arise only after the Controller complies with the principles of natural justice and affords an Applicant a meaningful opportunity to cure any defects.”

Fresh Consideration Ordered: What It Means for Inventors and Practice

The High Court set aside the rejection dated 18th August 2021 and remanded the application for de novo consideration before a different Controller. The operation of the order has been stayed for two weeks at the respondents’ request.

This outcome sends a clear message: patent applicants are entitled to know the precise deficiencies against them and must be given reasonable latitude to address them. Working examples are not mandatory in every case, and hyperlinks or supplementary data placed on record deserve proper consideration.

For practitioners, the judgment reinforces the need to press for extended hearings or specific objections under Section 14 when any apprehension of refusal arises. For inventors, it offers reassurance that years of development effort will not be summarily dismissed through unreasoned or procedurally flawed orders.

The case is now poised for a fresh, procedurally compliant examination that could determine whether the therapeutic device ultimately secures protection in India.