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* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 20.11.2025 Date of Decision: 23.03.2026 Judgment uploaded on: As per digital signature + C.A.(COMM.IPD-PAT) 306/2022 WIRTGEN GMBH .....Appellant Through: Mr. Rohit Rangi, Mr. Vineet Rohilla, Mr. Debashish Banerjee, Mr. Pankaj Soni & Mr. Ankush Verma, Advs.

versus CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS AND ORS .....Respondents Through: Ms. Nidhi Raman, CGSC with Mr.

Om Ram, Mr. Arnav Mittal and Mr.

Mayank Sansanwal, Advs.

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CORAM:

HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA

J U D G M E N T

MANMEET PRITAM SINGH ARORA, J:

1. This is an appeal under Section 117A of the Patents Act, 1970 (‘the Patents Act’), challenging the order dated 25.11.2019 (‘impugned order’) passed by the Assistant Controller of Patents and Designs/Respondent No. 2 in Indian Patent Application number 2874/DEL/2010 filed on 03.12.2010 (‘Subject Patent Application’) for the invention titled ‘BIT HOLDER AND BASE PART FOR RECEIVING A BIT HOLDER’.

FACTUAL MATRIX

2. Brief facts necessary for deciding the present appeal are set out below:

3. The Appellant/Wirtgen GMBH filed the Subject Patent Application on 03.12.2010 as a convention application claiming priority from the German Patent Application No. 10 2009 059.3-24 dated 17.12.2009. The bibliographic details of the application are given below:

4. The FER was issued on 13.07.2017 after a period of six and a half years. The FER listed various objections raised by Respondent No. 2, wherein the primary objections raised were pertaining to:

i. Claims are lacking inventive step under Section 2(1)(ja) of the Patents Act and ii. Claims do not sufficiently define the scope of the present invention under Section 10(4)(c) of the Patents Act.

5. The Appellant thereafter filed a detailed response complying with all the requirements raised in the FER on 05.01.2018. Vide the said response, the Appellant clarified the following:

i. Lack of Inventive Step: The prior art documents fail to disclose ‘a bit holder including a base part for receiving the said bit holder this enables long-lasting and rigid bracing of the bit holder with respect to the base part under high stress. The invention discloses a bit holder in which the supporting and bearing surfaces are arranged at an angle to each other. The longitudinal axis of the bit receptacle and the insertion projection form an obtuse angle, creating a supporting region that helps dissipate transverse loads during tool use.

ii. Unity of Inventions: the Claim 1 is directed towards a bit holder, whereas Claim 15 recites a base part for receiving the said bit holder and both sets of claims are linked with each other with a common feature of ‘bit holder’. Claim 20 describes the direction of the supporting surfaces.

iii. Clarity and Conciseness, Definitiveness and other requirements: the claims were amended to meet the requirements and the dependency clause ‘according to’ appearing in the sub claim had been replaced with ‘as claimed in claim’.

6. Thereafter, a hearing notice was issued on 30.08.2019 for the official hearing of the Subject Patent Application on 18.09.2019. Certain objections were raised by Respondent No. 2 in the said hearing notice. The official deadline to file written submissions was 03.10.2019; however, pursuant to a telephonic discussion with Respondent No. 2, the Appellant filed a petition under Rule 138 along with the official fee on 30.09.2019, seeking an extension of the official deadline for filing the written submission by one (1)

month. The fresh deadline was extended to 03.11.2019. In view of the extension, the Appellant filed a detailed written submission in response to the objections raised in the hearing notice on 01.11.2019.

7. Respondent No. 2 issued the impugned order on 25.11.2019, which was communicated to the Appellant on 27.11.2019. The Subject Patent Application was rejected on the ground that Claims 1 to 22 lack inventive step in view of prior art documents D1-D4 under Section 2(1)(ja) of the