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2026 Supreme(Online)(Mad) 64733
IN THE HIGH COURT OF JUDICATURE AT MADRAS
K.Kumaresh Babu, J
QUALCOMM INCORPORATED – Appellant
Versus
CONTROLLER OF PATENTS AND DESIGNS – Respondent
CMA(PT) No. 3 of 2024
For the Appellants/Petitioners: P. Rajkumar
For the Respondents: J.Madanagopal Rao, S.Sasikala
A patent rejection order is considered arbitrary and a colourable exercise of power if it fails to provide reasoned grounds for rejecting the applicant's submissions, necessitating a remand for reconsideration by a different officer to avoid pre-determination.
Headnote:The appeal was filed under Section 117A of the Patents Act, 1970, challenging an order dated January 14, 2021, which rejected a patent application on the grounds that the invention was obvious to a person skilled in the art and lacked inventive steps as required under Section 2(1)(ja) of the Act. The court found that the respondent failed to provide specific reasons for rejecting the oral and written submissions of the appellant's agent. The court examined whether the impugned order was arbitrary. It was held that merely stating that submissions were considered, without explaining why they were rejected, constitutes a blanket statement that renders the order arbitrary and a colourable exercise of power. In such view of the matter, the impugned order 14.01.2021 rejecting the Grant of Patent is set aside and the matter is remanded for reconsideration.
| Table of Content |
|---|
| 1. background of patent application rejection based on obviousness and lack of inventive step. (Para 1 , 2 , 3) |
| 2. order held arbitrary due to lack of reasoned rejection of submissions. (Para 4) |
| 3. setting aside of the order and remand for reconsideration by a different officer. (Para 5 , 6) |
PRAYER:-
Civil Miscellaneous Appeal filed under Section 117A of the Patents Act, 1970 against the order of the Controller of Patents and Designs to issue an order setting aside the Impugned order dated January 14, 2021 for being unjust, illegal and arbitrary and consequently issue direction to the Respondent to grant a patent on the Patent Application No. 6970/CHENP/2013 and pass such other appropriate relief, order and/ or direction, which this Court may deem fit and proper.
JUDGMENT
The present Appeal has been filed challenging the order of the Controller of Patents and Designs, dated January 14, 2021 for being unjust, illegal and arbitrary and consequently issue direction to the Respondent to grant a patent on the Patent Application No. 6970/CHENP/2013.
2. Heard both sides.
3. The patent application of the appellant had been rejected solely on the ground that the invention is obvious to a person skilled in the art to arrive at the claimed feature on the basis of the prior art D1 & D2 and common general knowledge. The impugned order also indicates that the said invention would be obvious in the course of a normal research, experiment and trial & error to hold that the invention lacks inventive steps as required under Section 2 (1)(ja) of the Act. The impugned order further reveals that while considering the claim based upon the cited documents have been extracted and the judgment of the Hon’ble Delhi High Court relating to a person in skilled art had been extracted and conclusion have been arrived at.
4. It is also to be noted that no reasons have been given by the respondent as to why the oral and written submissions made by the Agent of the appellant were liable to be rejected except to blanketly state they there were considered.
For the aforesaid reasons, this Court is of the view that the aforesaid order suffers from the vice of arbitrariness and therefore is a colourable exercise of power.
5. In such view of the matter, the impugned order 14.01.2021 rejecting the Grant of Patent is set aside and the matter is remanded for reconsideration on the following terms:
(a) In order to preclude the possibility of pre determination, an officer other than the officer who issued the impugned order shall undertake re-consideration.
(b) After providing a reasonable opportunity to the appellant, a reasoned decision shall be issued within a period of four months from the date of receipt of a copy of this order.
(c) For the avoidance of doubt, it is made clear that no observation has been made on the merits of the patent application.
6. On the above terms, this Appeal is disposed of. However, there shall be no order as to costs.
14-07-2026
Index: Yes/No
Speaking/Non-speaking order
Neutral Citation: Yes/No
GBA
