XX-RIB UNDER SCRUTINY: CALCUTTA HIGH COURT REOPENS DESIGN CANCELLATION
Case: ARS Steels and Alloy International Private Limited v. The Controller of Patents and Designs & Ors
Judgment dated: 7 May 2026
Court: Calcutta High Court
Case Background
The dispute concerns a registered design for a double “XX-Rib” pattern applied to construction rods/TMT bars. The design, bearing Registration No. 257980 under class 25-01, was registered in favour of Souvik Steels Private Limited on 6th November 2013.
Both ARS Steels and Alloy International Private Limited and Souvik Steels Private Limited are engaged in the manufacture of TMT bars. In early 2016, Souvik Steels issued an infringement notice to ARS Steels alleging unauthorised use of the registered XX-Rib design.
In response, ARS Steels filed an application under Section 19 of the Designs Act, 2000 seeking cancellation of the registered design. ARS Steels sought cancellation of the design on the grounds that the design had been previously registered/published, was neither new nor original, and was purely functional in nature. The Deputy Controller of Patents and Designs rejected the cancellation petition by order dated 10 April 2023, holding that there was no prior publication, that the design was not in the public domain, and that the design had aesthetic eye appeal and was not merely mechanical.
Aggrieved by the rejection, ARS Steels filed an appeal before the Calcutta High Court.
Issues for Consideration
The Court considered:
- Whether the XX-Rib design had been previously published prior to its registration;
- Whether the impugned design was new and original under the Designs Act, 2000;
- Whether the design was merely functional or possessed registrable aesthetic features;
- Whether the Deputy Controller had properly considered the documentary evidence and applied the correct legal tests for prior publication, novelty, originality, and functionality..
Submissions of the Parties
Appellant’s Submissions
The Appellant contended that the impugned XX-Rib design was neither new nor original, as both X-Rib and XX-Rib configurations were already available in the market prior to the registration date of 6th November 2013. In support of this contention, the Appellant relied on documentary evidence including trade publications, newspaper reports, sales invoices, and affidavits from steel manufacturers, which collectively indicated prior use and publication of similar rib patterns. The Appellant specifically referred to publications such as the Indian Concrete Journal, Business Line, and The Hindu to show that X-Rib designs were already known in the market, and also relied on sales invoices from March and April 2003 evidencing prior sale of X-Rib TMT rods. Further, evidence from M/s I Steel, Indus Steel and Alloys Limited, and M/s Blue Steel was relied upon to demonstrate that XX-Rib TMT bars were also available in the market before the date of registration. The Appellant also placed reliance on the earlier decision in SRMB Srijan Limited v. Triveni Industries Pvt. Ltd., which concerned X-Rib designs in relation to TMT rods and had found lack of novelty and prior market availability.
It was further submitted that the impugned design was functional in nature, since rib patterns on TMT bars serve the purpose of improving bonding with concrete. Accordingly, the Appellant argued that the Deputy Controller failed to properly appreciate the evidence on record and did not apply the correct legal tests for prior publication, novelty, and originality.
Respondent’s Submissions
The Respondent contended that the Deputy Controller’s order was reasoned, well-considered, and did not call for interference in appeal. It was submitted that the Appellant had failed to place on record any material establishing prior publication of a design substantially similar to the impugned registered design. The Respondent further argued that the registered design was not merely functional in nature, but possessed aesthetic eye appeal capable of attracting design protection. It was also submitted that a design does not become unregistrable merely because it has functional attributes, provided it also possesses visual appeal. Accordingly, the Respondent maintained that the Deputy Controller had duly considered the aspects of functionality and eye appeal before rejecting the cancellation petition.
The Controller submitted that:
- The impugned order was sustainable and required no interference;
- The Appellant had failed to establish prior publication or prior disclosure of a substantially similar design;
- The Appellant had not proved priority over the impugned design;
- All contentions raised by the parties had been considered in the order under appeal.
Observations of the Court
The Court observed that a previously published design is incapable of registration and is liable to be cancelled under the Designs Act, 2000. For prior publication to defeat novelty, the publication must be in tangible form and sufficient to enable a person with ordinary knowledge of the subject to visualise the design without applying independent creativity.
The Court found that the Deputy Controller failed to properly consider the documentary evidence relied upon by the Appellant, including publications, newspaper reports, sales invoices, and manufacturer affidavits showing prior market availability of X-Rib and XX-Rib designs. It further held that novelty and originality are distinct requirements, and the impugned design ought to have been compared with prior designs through an instructed eye, having regard to the state of the art.
The Court noted that the Deputy Controller relied on a general ocular impression without examining whether the XX-Rib design was merely an ordinary trade variant of existing rib patterns or whether such patterns were common to trade. The Court also found that the earlier decision in SRMB Srijan Limited v. Triveni Industries Pvt. Ltd., which held that X-Rib designs for TMT rods lacked novelty and were available in the market since 2001-2002, was not properly considered. On functionality, the Court held that while a design may have both functional and aesthetic attributes, the Controller was required to examine whether the design as a whole was dictated purely by function. The finding on functionality was therefore held to be inadequately reasoned.
Directions / Relief Granted
The Court held that:
- The Deputy Controller’s finding that there was “no scope of enquiry” regarding similar products available in the market was perverse;
- The impugned order ignored material documentary evidence relied upon by the Appellant;
- The correct legal tests for novelty, originality, and prior publication had not been applied;
- The finding on functionality was insufficiently reasoned;
- The order dated 10 April 2023 rejecting the cancellation petition was unsustainable.
Accordingly, the Calcutta High Court set aside the order of the Deputy Controller and remanded the matter to a different officer for fresh consideration. The Court directed that both parties be given an opportunity of hearing and that the exercise be completed within three months from the date of communication of the order.
The Court clarified that its findings on merits were tentative and would not bind the officer conducting the fresh examination.
Conclusion
The decision reinforces that registration alone does not insulate a design from cancellation scrutiny. Where prior publication, prior use, and lack of novelty are alleged, the Controller must undertake a structured assessment of the evidence and compare the impugned design with the existing state of the art.
The Court also clarified that novelty and originality cannot be assessed merely through superficial visual impression. A design must be examined against what was already available in the market, and ordinary trade variants of known designs cannot be granted statutory monopoly merely because they have been registered.
The case is significant for design law in functional industries such as construction materials, where surface configurations may have both visual and technical aspects. It emphasizes that the boundary between aesthetic registrability and functional/common trade features must be carefully examined before sustaining design exclusivity.
BOLAR DEFENCE NEEDS PROOF: SECTION 107A CANNOT SHIELD COMMERCIAL EXPORT
Case: Novartis AG & Anr. v. Venkata Narayana Active Ingredients Pvt. Ltd.
Judgment dated: 3 June 2026
Court: Madras High Court
Case Background
The dispute arose from a patent infringement suit concerning Indian Patent No. 212815, relating to the active pharmaceutical ingredient VILDAGLIPTIN, a new chemical entity used for the treatment of Type 2 Diabetes Mellitus.
The first Plaintiff was the proprietor of the suit patent. The second Plaintiff marketed VILDAGLIPTIN products in India under the trademarks GALVUS and GALVUS MET. The Plaintiffs had earlier filed C.S. No. 329 of 2015 against the Defendant on a quia timet basis after noticing that the Defendant had offered VILDAGLIPTIN for sale. That suit was decreed on 31 July 2015 on the basis of undertakings given by the Defendant, whereby the Defendant acknowledged the Plaintiffs’ rights in IN 212815 and undertook not to manufacture, sell, supply, export, import, or offer for sale VILDAGLIPTIN.
Subsequently, the Plaintiffs received information that the Defendant had exported large quantities of VILDAGLIPTIN API from India to Egyptian entities during 2016-17. The Plaintiffs alleged that the importers in Egypt had commercialised VILDAGLIPTIN products and that the Defendant’s manufacture and export amounted to infringement of IN 212815.
The Defendant contended that the exports were made only for scientific research, development, bioequivalence, stability testing, and regulatory purposes, and were therefore protected under Section 107A of the Patents Act, 1970.
Issues for Consideration
The Court considered:
- Whether the suit had become infructuous due to expiry of the suit patent;
- Whether the suit patent expired on 9 December 2018 or 9 December 2019;
- Whether the Defendant was estopped from challenging the validity of the suit patent in view of the earlier consent decree and undertaking;
- Whether VILDAGLIPTIN was a metabolite and therefore not patentable under Section 3(d);
- Whether the Plaintiffs had failed to comply with Section 8 of the Patents Act;
- Whether the Defendant’s manufacture, stockpiling, and export of VILDAGLIPTIN API amounted to patent infringement;
- Whether the Defendant’s acts were protected under Section 107A of the Patents Act;
- Whether the Plaintiffs were entitled to damages, rendition of accounts, costs, and other reliefs.
Submissions of the Parties
Plaintiffs’ Submissions
The Plaintiffs contended that the Defendant, having earlier acknowledged the validity of IN 212815 and undertaken not to deal in VILDAGLIPTIN under the consent decree dated 31 July 2015, was estopped from disputing the patent’s validity.
They further submitted that the Defendant exported substantial quantities of VILDAGLIPTIN API to Egyptian entities while the patent was in force, and that such exports were not protected under Section 107A, as the importers were already commercially marketing VILDAGLIPTIN formulations. According to the Plaintiffs, the Defendant failed to produce credible evidence showing that the exports were solely for regulatory approval purposes, and mere invoice references to research and development were insufficient.
The Plaintiffs also contended that the patent term was to be calculated from the PCT filing date of 9 December 1999, and therefore expired on 9 December 2019, not 9 December 2018.
Defendant’s Submissions
The Defendant contended that the supply of VILDAGLIPTIN API to Egyptian importers was only for research and development purposes. It was submitted that, in the pharmaceutical industry, large quantities of API may be required for bioequivalence studies, stability studies, validation batches, clinical trials, and regulatory compliance before launch of a generic product after patent expiry.
The Defendant argued that Section 107A permits manufacture and supply of patented products for such purposes and that all shipping documents and invoices recorded that the supplies were for research and development only. It was further submitted that the Defendant had stopped producing and supplying VILDAGLIPTIN API on 16 March 2018, before receipt of the Plaintiffs’ legal notice dated 22 March 2018.
The Defendant also challenged the validity of the suit patent by alleging misrepresentation before the Patent Office, non-compliance with Section 8, and non-patentability under Section 3(d). It was further contended that the patent term should be reckoned from the priority date, and therefore the suit patent expired on 9 December 2018.
Observations of the Court
The Court held that the suit patent expired on 9 December 2019, as the term of a PCT national phase application is computed from the international filing date. Since the alleged exports occurred during 2016-17, the infringement claim survived despite subsequent expiry of the patent.
The Court further held that the Defendant was estopped from challenging the validity of IN 212815, having earlier acknowledged the Plaintiffs’ rights and the validity of the patent in C.S. No. 329 of 2015. The challenges under Sections 3(d) and 8 were also rejected, as the Defendant failed to prove that VILDAGLIPTIN was a metabolite or that the Plaintiffs had breached their disclosure obligations.
On Section 107A, the Court held that the provision applies only to acts done solely for regulatory approval purposes and reasonably related to submission of information required by law. The burden to establish this defence was on the Defendant, and mere references in invoices to research and development were insufficient.
The Court found that the purchase orders and supporting documents did not show that the exported API was required for regulatory approval in Egypt. Further, the Defendant had not conducted due diligence on end use, while evidence indicated that the Egyptian importers were already commercially offering VILDAGLIPTIN products. Accordingly, the Court held that the Defendant failed to establish protection under Section 107A.
Relief Granted
The Court held that:
- The suit patent expired on 9 December 2019, and not on 9 December 2018;
- The claim for relief survived because the alleged infringing exports were made while the patent was in force;
- The Defendant was estopped from challenging the validity of the suit patent;
- The Defendant failed to establish invalidity under Section 3(d) or Section 8;
- The Defendant failed to discharge the burden under Section 107A;
- The manufacture and export of VILDAGLIPTIN API by the Defendant amounted to infringement of IN 212815.
Accordingly, the suit was decreed in favour of the Plaintiffs. Since the patent had expired, certain injunctive reliefs became otiose. However, the Court granted relief by way of rendition of accounts, followed by a decree of profits. The Defendant was also directed to pay costs, to be determined by the Taxing Officer on the basis of actual costs incurred.
Conclusion
The decision clarifies the evidentiary burden on a defendant seeking protection under Section 107A of the Patents Act. The Court held that the Bolar/regulatory-use defence cannot be invoked merely by labelling invoices as “research and development purpose only.” The defendant must produce credible, contemporaneous, and regulatory-linked evidence showing that the patented product was supplied solely for uses reasonably related to obtaining marketing approval.
The judgment is significant for pharmaceutical patent enforcement in India, particularly in cases involving export of APIs during the patent term. It confirms that Section 107A permits genuine regulatory use, including for foreign regulatory approvals, but does not protect commercial export or unsupported claims of research use.
COPYRIGHT ASSIGNMENT EXEMPTED: STAMP DUTY DEMAND SET ASIDE
Case: Emami Biotech Limited v. State of West Bengal & Ors.
Order challenged: Order dated 13 September 2018, and appellate order dated 10 March 2022, signed on 16 June 2022
Court: Calcutta High Court
Case Background
The dispute arose from a Deed of Copyright Assignment dated 25 September 2014 executed by Rasoi Limited in favour of the Petitioner, Emami Biotech Limited. Under the deed, certain original artistic works, labels, and registered copyright works were assigned to the Petitioner for a total consideration of Rs. 9 crores.
At the time of registration, the deed was accepted and registered by the registering authority. Stamp duty was treated as exempt under Article 23 of Schedule IA of the Indian Stamp Act, 1899, and only Rs. 300 was paid.
Subsequently, the authorities issued a notice under Section 47A of the Indian Stamp Act for determination of market value and stamp duty. The Petitioner was directed to pay deficit stamp duty of Rs. 53,99,700. The appeal filed by the Petitioner was also rejected by the appellate authority on the ground that the Petitioner had not produced copyright registration certificates with seal and signature of the Copyright Office, and that another copyright assignment between the same parties had been stamped on full duty.
Aggrieved, the Petitioner filed the present writ petition challenging the stamp duty demand and the appellate order.
Issues for Consideration
The Court considered:
- Whether Section 47A of the Indian Stamp Act could be invoked when there was no dispute regarding market value;
- Whether the Deed of Copyright Assignment was exempt from stamp duty under Article 23 of Schedule IA;
- Whether the authorities were justified in demanding deficit stamp duty after registration of the deed;
- Whether non-production of copyright registration certificates before the appellate authority justified denial of exemption;
- Whether the impugned orders suffered from lack of reasoning and improper appreciation of the Copyright Act and Stamp Act.
Submissions of the Parties
Petitioner’s Submissions
The Petitioner contended that Section 47A can be invoked only where the market value of the property has not been truly set forth in the instrument. In the present case, there was no dispute regarding the valuation of Rs. 9 crores mentioned in the Deed of Assignment, and the same had already been accepted at the time of registration.
The Petitioner further submitted that no stamp duty was payable on the Deed of Copyright Assignment, as assignment of copyright is exempt under Article 23 of Schedule IA of the Indian Stamp Act. It was submitted that the only requirement under Section 19 of the Copyright Act, 1957, is that assignment must be in writing and signed by the assignor or authorised agent, which was duly satisfied.
The Petitioner also submitted that the authorities acted without jurisdiction and failed to assign reasons for denying the exemption that had already been granted at the time of registration.
Respondents’ Submissions
The Respondents contended that the notice was issued not only for determination of market value but also for determining the correct amount of stamp duty payable.
It was submitted that exemption under Article 23 of Schedule IA was subject to the satisfaction of the registering authority and the appellate authority. According to the Respondents, production of copyright registration certificates with seal and signature of the Copyright Office was necessary for claiming exemption.
The Respondents further argued that the appellate authority had jurisdiction under Section 47B to examine deficit stamp duty, and that the matter involved verification of whether the assigned works were validly covered by the claimed copyright exemption.
Observations of the Court
The Court observed that the Deed of Copyright Assignment recorded the market value as Rs. 9 crores, and the same value was accepted by the registering authority at the time of registration. Therefore, the case was not one of undervaluation or suppression of market value.
The Court held that Section 47A is intended to deal with instruments where the market value has not been truly set forth. Since there was no dispute regarding valuation, and the authority subsequently accepted the same value, invocation of Section 47A was arbitrary.
The Court further observed that the authorities failed to provide any reason as to why the Petitioner was not entitled to exemption under Article 23 of Schedule IA of the Indian Stamp Act. The earlier exemption granted at the time of registration was not properly considered while passing the deficit duty order.
The Court noted that assignment of copyright is governed by Sections 18 and 19 of the Copyright Act, 1957. Under Section 19, a copyright assignment is valid if it is in writing and signed by the assignor or authorised agent. In the present case, the Deed of Assignment satisfied these requirements and was duly registered.
The Court also found that the Accountant General’s objection, which proceeded on the basis that the assignment was not made “by entry” under the Copyright Act, failed to properly consider the Deed of Assignment and the relevant provisions of the Copyright Act. The Court held that such objection could not be sustained.
On the issue of copyright registration certificates, the Court observed that the appellate authority had not issued any notice requiring the Petitioner to produce such certificates. Further, the deed itself contained schedules identifying the labels and registered copyright works, and the Petitioner had also produced the relevant documents in the writ proceedings and supplementary affidavit.
Directions / Relief Granted
The Court held that:
- The Respondents failed to establish any undervaluation warranting invocation of Section 47A;
- The Petitioner had complied with Sections 18 and 19 of the Copyright Act, 1957;
- The Deed of Copyright Assignment was entitled to exemption under Article 23 of Schedule IA of the Indian Stamp Act;
- The authorities failed to assign reasons for denying the exemption;
- The Accountant General’s objection was unsustainable;
- The appellate finding regarding non-production of copyright certificates was not justified.
Accordingly, the Court set aside and quashed the order dated 13 September 2018 passed by the respondent authority and the appellate order dated 10 March 2022, signed on 16 June 2022. The writ petition was allowed.
Conclusion
The decision clarifies that stamp authorities cannot invoke Section 47A in the absence of undervaluation or suppression of market value. Where a copyright assignment satisfies the requirements of Sections 18 and 19 of the Copyright Act and falls within the exemption under Article 23 of Schedule IA of the Indian Stamp Act, deficit stamp duty cannot be demanded merely on the basis of a later audit objection.
The judgment also reinforces that administrative authorities must provide clear reasons when denying a statutory exemption, particularly where the instrument was already registered after accepting the declared value and granting exemption.
MUSIC, LYRICS, RECORDING: COURT DRAWS THE COPYRIGHT LINE
Case: Ilaiyaraaja v. Saregama India Limited & Ors.
Appeal: FAO(OS) (COMM) 52/2025
Court: Delhi High Court
Case Background
The dispute concerns the song “En Iniya Pon Nilave” from the Tamil film Moodu Pani. Saregama India Limited claimed rights in the sound recordings and the musical and literary works contained in the film, based on an agreement dated 25 February 1980 executed with Raja Cine Arts, the producer of Moodu Pani.
Saregama filed a suit alleging that Vels Film International Limited, Divo TV Private Limited, and Ilaiyaraaja had infringed its copyright by recreating the disputed song for the film Aghathiyaa. Vels Film claimed that it had obtained a licence from Ilaiyaraaja, who was the composer of the original song.
The learned Single Judge granted interim relief in favour of Saregama and restrained use of the recreated song without licence from Saregama. Ilaiyaraaja challenged the said order in appeal.
Issues for Consideration
The Court considered:
- Whether Ilaiyaraaja, as composer, retained copyright in the musical work contained in the disputed song;
- Whether Saregama owned copyright in the sound recording of the song by virtue of assignment from the film producer;
- Whether Ilaiyaraaja could validly license the sound recording and lyrics of the song to Vels Film;
- Whether the recreated song amounted to infringement of Saregama’s copyright;
- Whether the injunction granted by the learned Single Judge was liable to be interfered with.
Submissions of the Parties
Appellant’s Submissions
Ilaiyaraaja contended that, as the composer of the disputed song, he was the author and first owner of the copyright in the musical work. It was submitted that his rights under Section 14 of the Copyright Act, including the right to make or authorise an adaptation of the musical work, continued to subsist despite the song being incorporated in a cinematograph film.
It was further argued that Section 13(4) preserves the separate copyright in underlying works, and that the producer’s rights in the cinematograph film could not extinguish the composer’s independent copyright in the musical composition. Accordingly, Ilaiyaraaja submitted that he had validly licensed the musical work to Vels Film for adaptation and use in Aghathiyaa.
Respondent’s Submissions
Saregama contended that Raja Cine Arts, as producer of Moodu Pani, owned the copyright in the film and its sound recordings, and had assigned such rights to Saregama under the agreement dated 25 February 1980.
It was submitted that Ilaiyaraaja may have composed the music, but he had no copyright in the lyrics or in the sound recording of the disputed song. Therefore, he could not have authorised Vels Film to recreate or use the song in a manner involving the original lyrics or sound recording rights.
Saregama further submitted that Vels Film had made a fresh sound recording using the lyrics and musical composition of the original song without obtaining licence from Saregama, thereby infringing its copyright.
Observations of the Court
The Court observed that copyright in a song may vest separately in different components, namely the musical work, the lyrics, and the sound recording. These rights are distinct and must be examined independently.
The Court held that Ilaiyaraaja, being the composer, was the author and first owner of copyright in the musical work forming part of the disputed song. His rights in the musical composition were protected under Section 13(4) of the Copyright Act and were not extinguished merely because the song was incorporated in a cinematograph film.
However, the Court clarified that Ilaiyaraaja’s copyright was limited to the musical work. It did not extend to the lyrics or to the sound recording of the disputed song. Copyright in the lyrics would vest in the lyricist, while copyright in the sound recording of the song, as part of the cinematograph film, vested in the producer and thereafter in Saregama by assignment.
The Court examined the agreement dated 17 March 2023 between Ilaiyaraaja and Vels Film and noted that Ilaiyaraaja had represented himself as the copyright holder of the sound recording and underlying works. The Court found that such representation exceeded the rights actually held by him, since he was not the owner of copyright in the sound recording or lyrics.
The Court further held that Saregama had acquired copyright in the sound recordings of Moodu Pani, including the sound recording of “En Iniya Pon Nilave”, under the 1980 agreement. Therefore, Vels Film could not recreate, adapt, or exploit the sound recording without obtaining licence from Saregama.
Interim Directions
The Court held that:
- Ilaiyaraaja retained copyright only in the musical composition of the disputed song;
- He did not own copyright in the lyrics or the sound recording;
- Saregama owned copyright in the sound recording of the disputed song by virtue of assignment from the producer;
- Vels Film could not exploit the sound recording without Saregama’s licence;
- The use/recreation of the disputed song without such licence amounted to infringement of Saregama’s copyright in the sound recording.
- Accordingly, the Court upheld the injunction granted by the learned Single Judge and dismissed the appeal.
Conclusion
The decision clarifies the layered nature of copyright in film songs. A composer may retain copyright in the musical composition, but such right does not automatically extend to the lyrics or the sound recording.
The Court recognised Ilaiyaraaja’s independent copyright in the musical work, but held that he could not license rights he did not own. Since Saregama owned the sound recording rights in the disputed song, any recreation or exploitation involving the sound recording required Saregama’s licence. The ruling reinforces that rights in musical works, lyrics, and sound recordings must be separately identified before licensing or recreating film songs.
REMAND MEANS HEARING, NOT RE-EXAMINATION: FRESH PRIOR ART BARRED
Case: Qualyst Transporter Solutions LLC v. Assistant Controller of Patents and Designs
Order dated: 15 June 2026
Court: Bombay High Court
Case Background
The dispute arose from a patent prosecution matter concerning Indian Patent Application No. 201727011198. Earlier, by order dated 15 October 2025, the Court had set aside the refusal order passed by the Controller on the ground that certain objections had been raised for the first time in the impugned order without giving the Applicant an opportunity to respond. The Respondent accepted that this amounted to a violation of principles of natural justice.
Accordingly, the matter was remanded to an independent Controller for fresh hearing, with a direction that the exercise be completed within three months.
After remand, instead of proceeding only with a fresh hearing on the existing record, the Controller issued a hearing notice dated 16 January 2026 raising new objections and citing fresh prior art references D1 to D6. The Applicant therefore filed the present Interim Application seeking clarification that the remand was limited to objections already forming part of the earlier record, and that no new objections or prior art references could be introduced at this stage.
Issues for Consideration
The Court considered:
- Whether the order of remand permitted the Controller to reopen the examination process;
- Whether the fresh hearing after remand was confined to the existing examination record;
- Whether the Controller could introduce new prior art references and fresh objections after remand;
- Whether the hearing notice dated 16 January 2026 exceeded the scope of the remand order.
Submissions of the Parties
Applicant’s Submissions
The Applicant contended that the order of remand was clear and limited. The only defect identified by the Court was denial of an opportunity to respond to objections that had been raised for the first time. Therefore, the Controller was required only to grant a fresh hearing on the existing record.
It was submitted that the patent application had already undergone examination, the First Examination Report was issued in December 2020, responses and amendments were filed in June 2021, and hearing notices were issued thereafter. Thus, the examination stage had already concluded.
The Applicant argued that the Controller could not use the remand as an opportunity to restart examination by introducing new objections and fresh prior art references. The Applicant further submitted that a remand order must be followed strictly, and the authority on remand cannot travel beyond the scope of the directions issued by the Court.
Respondent’s Submissions
The Respondent contended that the application was misconceived and premature. It was submitted that the remand order did not expressly restrict the Controller from raising further objections or citing additional prior art.
The Respondent argued that patent prosecution involves public interest, as grant of a patent creates a statutory monopoly. Therefore, the Controller must retain power to raise further objections during examination if required.
The Respondent also relied on Patent Office practice and Circular No. 4 of 2011 to submit that further objections arising after consideration of the Applicant’s response may be communicated through a hearing notice. According to the Respondent, the objections and prior art references were communicated in writing before the hearing, thereby satisfying the requirements of natural justice.
Observations of the Court
The Court observed that although the Controller generally has power during examination to raise further objections through a hearing notice, the question in the present case was different. The issue was not the Controller’s general statutory power, but whether such power could be exercised after a limited remand order.
The Court held that the order of remand was passed only to cure a breach of natural justice. The earlier refusal order had been set aside because objections were raised without giving the Applicant an opportunity to respond. The remand was therefore intended to provide a fresh hearing, not to reopen the entire examination process.
The Court further noted that, when the remand order was passed, the Controller did not seek liberty to raise fresh objections or cite new prior art. There was also no suggestion that the examination process was incomplete or required reopening. The direction to complete the matter within three months also indicated that only a fresh hearing remained.
The Court held that the expression “considered afresh” in the remand order had to be read in context. It meant fresh consideration after giving the Applicant an opportunity to address the objections already raised. It did not authorise a de novo examination or introduction of entirely new prior art references.
The Court accepted that patent proceedings involve public interest but held that such consideration could not permit the Controller to exceed the specific scope of the remand order.
Directions / Relief Granted
The Court held that:
- The Controller’s jurisdiction on remand was confined to curing the procedural defect identified in the remand order;
- The fresh hearing had to proceed on the basis of the existing examination record;
- The Controller could elaborate, clarify, or further develop objections already emerging from the earlier record;
- However, the Controller could not introduce entirely new prior art references or wholly new grounds of objection;
- Introducing fresh prior art and new objections would amount to reopening the examination process, which was beyond the scope of the remand.
Accordingly, the Interim Application was allowed. The Court directed that the hearing be completed and the order be passed within eight weeks from the date of uploading of the order.
However, after pronouncement, the Court stayed the effect of its order for four weeks on the Respondent’s request.
Conclusion
The decision clarifies that a remand in patent prosecution must be read according to its specific terms and purpose. Where a refusal order is set aside only for violation of natural justice, the Controller cannot treat the remand as permission to restart examination or introduce fresh prior art.
The Court recognised the Controller’s general power to raise further objections during prosecution but held that such power cannot override the limited scope of a judicial remand. In effect, the fresh hearing must cure the procedural defect identified by the Court and cannot be used to fill gaps or reopen concluded examination.
