* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 17.04.2026 + C.A.(COMM.IPD-PAT) 488/2022 NIPPON STEEL CORPORATION .....Appellant versus THE CONTROLLER OF PATENTS .....Respondent Advocates who appeared in this case:

For the Petitioner : Mr. Vineet Rohilla and Mr. Rohit Rangi, Advocates.

For the Respondents : Mr. Sumit Nagpal, SPC with Mr. Tanmay Saini and Mr. Kunal Khurana, Advocates.

CORAM:

HON’BLE MR. JUSTICE TUSHAR RAO GEDELA

J U D G M E N T

TUSHAR RAO GEDELA, J. (ORAL)

1. The present appeal has been filed under Section 117A(2) of the Patents Act, 1970 (hereinafter referred to as ‘the Act’) seeking inter alia quashing and setting aside of the Order dated 26.05.2020 issued by the respondent refusing appellant’s patent application no.10182/DELNP/2012 (hereinafter referred to as ‘subject application’).

2. The appellant had filed a Japanese Application no. 2010-119482 on 25.05.2010 before the Japanese Patent Office. On 19.05.2011, the PCT International Application no. PCT/JP2011/061510 was filed by the appellant. On 23.11.2012, the Indian application no. 10182/DELNP/2012 was filed before the Indian Patent Office, Delhi. The request for examination was filed by the appellant on 26.11.2012. The First Examination Report was issued by the Patent office on 01.06.2018 inter alia raising the following objections:

• Lack of novelty under Section 2(1)(j) of the Act.

• Lack of inventive step under Section 2(1)(ja) of the Act.

• Lack of industrial applicabilility • Lack of unity of invention • Lack of sufficiency of disclosure • Objection under Section 3 of the Act • Scope, definitiveness and other requirements

3. Upon receipt of such objections as per the First Examination Report vide the response dated 25.10.2018, the appellant filed its detailed substantial reply. The Patent office issued a notice of hearing dated 03.01.2020 scheduling the date of hearing on 04.02.2020. Post hearing written submissions in reply to the objections raised in the hearing notice was filed by the appellant on 18.02.2020. Consequent thereto, the learned Controller by the impugned order dated 26.05.2020 refused the acceptance of the patent application on the ground of lack of inventive step under Section 2 (1) (ja) of the Act. Based on the aforesaid, the present appeal was filed.

4. Heard learned counsel for the parties.

5. At the outset, Mr. Vineet Rohilla, learned counsel for the appellant states that the impugned order has to be quashed and set aside for the mere reason that it violates the principles of natural justice. He makes the aforesaid submission good by stating that other than to reproduce the prior art Document D3, D2 and D1 extensively, the learned Controller has not considered any of the submissions tendered by the appellant nor has he given any reasons which are sine qua non for an order of this nature to be upheld.

6. With the assistance of the learned counsel for the parties, this Court has perused the impugned decision.

7. From a perusal of the impugned order, it appears that under the heading “SCIENTIFIC AND TECHNICAL ANALYSIS”, the learned Controller appears to have extracted extensively from the cited Documents D1, D2 and D3. So far as the analysis is concerned, the same appears to be bereft of any application of mind or the reason which could reasonably construed as sufficient for the purpose of the conclusion that the learned Controller arrived at. In order to make it more clear, it is appropriate to extract the entire impugned order hereunder:

“DECISION The Applicant filed this application No. 10182/DELNP/2012 for the grant of patent on 23/11/2012 for the invention titled "PROCESS FOR PRODUCTION OF UNIDIRECTIONAL ELECTROMAGNETIC STEEL SHEET".

In this matter, the facts that have come to my knowledge and made available to me can be traced as follows:

23/11/2012:- Application for grant of patent was filed.

01/06/2018:- First examination report (FER) was issued to the Applicant.

25/10/2018:- Reply to FER was received from the Applicant to th