Order For Refusal Of Patent Set Aside: Delhi High Court Directs Re-Consideration Of Inventive Step Using 'Hoffman Test'

The Delhi High Court once again found flaws in the process of determining inventive step in yet another appeal against the refusal of a patent. In the case of Resham Priyadarshini vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 9/2025], the Delhi High Court held that the unreasoned finding of the Controller that the features of Claim 1 lack any technical advancement in comparison with the prior arts under Section 2(1)(ja) of the Patents Act, 1970, had no merit. The Court further determined that the respondent had failed to perform an analysis in accordance with the 5-step test set out in F. Hoffmann-La Roche Ltd. v Cipla Ltd.

Facts of the Appeal

This case joins a long list of similar cases in which the applicant seeks a review of the refusal order by filing a petition under Section 77(1)(f) of the Patents Act, 1970, before the Controller. When such a review petition is rejected, the applicant files an appeal against the original refusal order passed under Section 15, before the Court under Section 117-A(4). Since the delay in filing an appeal may be unavoidable under the permitted review procedure, the applicant must also seek condonation of the delay.

In the present case, the applicant filed an appeal against the Controller's order with I.A.7497/2025 under Section 5 of the Limitation Act, 1963, read with Section 117-A(4) of the Patents Act, read with Section 151, Code of Civil Procedure, 1908, for seeking condonation of delay in filing the appeal along with a supporting affidavit. Based on the reason provided in the I.A. 7497/2025 along with a supporting affidavit, the Court condoned the delay in filing the appeal. The applicant had challenged the reasons given by the Respondent Controller for the rejection of the subject patent application under Sections 10(5) and 2(1)(ja).

• Facts Necessary to Decide the Appeal
• The patent application for 'A Device for Folding or Bending an Article' [202011013257] filed by Resham Priyadarshini was refused by the Assistant Controller of Patents and Designs vide the impugned order dated February 23, 2023. The reason for rejection of the patent was stated as non-compliant with Section 10(4)(c) read with Section 10(5), with Claim 1 having terms that are indefinite and unclear to define the scope of the claimed invention. The respondent Controller also stated that, in view of the cited prior art, the invention as claimed was not inventive and was therefore not patentable under Section 2(1)(ja).

The appellant filed a review petition under Section 77(1)(f) on June 6, 2023, against the said order. The review petition was also dismissed by the respondent Controller on the grounds that it was filed beyond the prescribed time. The appellant preferred an appeal against the refusal of the patent application under Section 15.

Case of the Appellant

On Maintainability of the Appeal

The appellant submitted that the appeal against the impugned order is maintainable, subject to condonation of delay by the Court for filing the appeal. The appellant argued that the delay in filing the appeal before the Court was caused by the delay in deciding their review petition by the patent office, which, according to the appellant, was a 'sufficient cause'.

On Clarity of the Scope of Claimed Invention

One of the objections raised by the respondent Controller while refusing the patent application was that the claimed invention was not clearly defined. As a counter to this objection, the appellant submitted that the invention was clearly defined, as the features/terms 'input conveyor mechanism (300)' and 'output mechanism (600)' were sufficiently defined and made clear in the Complete Specification through detailed description and drawings filed with the subject patent application. The appellant pleaded that since the respondent Controller recorded in the impugned order that the claims could be amended to fulfil the requirement under Section 10(4)(c) and 10(5) of the Patents Act, the appellant may be granted an opportunity to amend the claims of the subject patent application to the satisfaction of the Controller.

On Section 2(1)(ja)

The appellant argued that prior art citations, viz. US 10464754B2(D1) and US 7331156B2 (D2) neither fell within the same field of invention, nor a person skilled in the art of manufacturing folding/bending devices would reasonably look to references such as D1 or D2 for the solution sought to be resolved through the subject patent application. According to the appellant, D1 and D2 cannot be cited either individually or in combination to challenge the inventive step of the claimed invention under Section 2(1)(ja).

The appellant relied on the judgment of the High Court of Madras in Microsoft Technology Licensing LLC, One Microsoft Way vs Assistant Controller of Patents and Designs [2024 SCC OnLine Mad 2785]. The appellant submitted that the objection raised by the Controller under Section 2(1)(ja) of the Patents Act also did not have merit, since the prior art D1 and D2 relied upon by the Controller in the hearing notice were non-analogous prior arts, as they neither disclose or teach folding or bending articles, nor do they provide any teaching relevant to the problem addressed by the invention.

Respondent Controller's Argument

Why the Appeal is not Maintainable

The respondent Controller submitted that the present appeal was not maintainable since Section 117A(2) of the Act does not contemplate or permit an appeal against a decision of the Controller in respect of which a review order has already been rendered under Section 77(1)(f) of the Act. The respondent contended that, as such review orders under Section 77(1)(f) have been issued in continuation of the Controller's original decision passed under Section 15 of the Act, the applicant cannot thereafter be allowed to circumvent the statutory provisions by preferring an appeal against the original order passed under Section 15.

According to the respondent, such an interpretation would defeat the intent and structure of the Act. The respondent contended that after having elected to pursue review, the applicant could now, in effect, revive an appeal against the original Section 15 order as an alternative or parallel remedy. According to the respondent, such a manoeuvre would render the review mechanism redundant and enable parties to engage in piecemeal challenges, which the statutory framework clearly seeks to prevent.

On the Delay in Filing the Review Application

The respondent submitted that the appellant was required under the Rule 130 of the Patent Rules, 2013 to file a review application on Form 24 for review of the Controller's decision under Section 77(1)(f) within 1 month from the date of communication of such order or decision to the applicant or within 1 month thereafter as the Controller may, on a request made in Form 4, allow. The respondent submitted that the appellant filed the review petition under Section 77(1)(f) on June 6, 2023, without seeking an extension of time. Rule 130 of the Patent Rules, 2003 mandates that an application for extension of time should be filed on Form 4 along with the review petition filed on Form 24. This itself is a sufficient reason to reject the application for review.

On Indefinite Terms Used in Amended Claims

The respondent submitted that the technical features or terms that the appellant used in their claims (as amended) involved "device", "input conveyor mechanism", "inlet portion of device", "platform", "moving member", "output mechanism", as well as "outlet portion" are not definitive in nature and no explanation with respect to the said terms were provided by the Appellant in its claims (as amended).

The respondent submitted that Claim 1 (as amended) provides that the invention is "a device (100) for folding or bending an article", but the said structure of Claim 1 is insufficient to explain the invention adequately. It may simply be an abstract of the invention. Since the appellant failed to define the terms "input conveyor mechanism" and "output conveyor mechanism" in its claims (as amended), and the claimed invention failed to satisfy the provisions of Section 10(5) of the Act. The respondent argued that due to the indefinite nature of the said terms, they could not conduct a proper assessment of the scope of the invention, and the patent application was accordingly refused.

On Lack of Inventive Step

The respondent submitted that the appellant failed to distinguish cited prior arts D1 and D2 from the said invention. The respondent argued that from the terms used in the principal Claim 1 by the appellant, technical features could not be assessed and thus, inventive step could not be ascertained. Accordingly, the objection regarding the same was also not waived by the respondent. The respondent also admitted that they could not properly assess the scope of the invention due to the indefinite terms used in the appellant's claims, and the application was therefore refused under Section 15.

Court's Analysis and Findings

Questions before the Court

Apart from the question of maintainability of the present appeal and condonation of delay, the other basic questions before the Court in this case were:

1. Whether the amended claims of the subject patent application filed on September 15, 2022, fulfil the requirement under Sections 10(4)(c) and 10(5) of the Patents Act, and therefore the scope of principal claim 1 cannot be determined?
2. Whether the claims of the subject patent application possess inventive step as per Section 2(1)(ja) of the Patents Act?

To find answers to the framed questions, the Court examined the grounds of appeal and the reasons for the rejection of the subject patent application under Sections 10(5) and 2(1)(ja).

On Section 10(4)(c) Objections

To address the objections under Section 10(4)(c), the Court relied on the judgment in AGFA NV & Anr. vs Controller of Patents & Designs, where the Coordinate Bench of the Court was seized of a similar issue as in this case. In the 'AGFA case', the Court's decision addressed the objection under Sections 10(4)(c) and 10(5), by perusing the dependent claims and the detailed description of the Complete Specification of the patent application.

Applying the judgment of the Agfa case in this case, the Court perused the drawings and relevant paragraphs of the Complete Specification of subject patent application as well as the dependent claims, concluding that the terms/features 'input conveyor mechanism (300)' and 'output mechanism (600)' of Claim 1 of the Complete Specification of subject patent application were clear when read together with the detailed description of the invention along with drawings of the Complete Specification of subject patent application as required under Section 10(5) of the Act.

On Section 2(1) (ja) Objections

The Court examined the reasons given by the respondent Controller for refusing the patent for lack of inventive step under Section 2(1)(ja) and found that the respondent Controller's finding on inventive step determination was flawed as it was not done according to the 5-Step Hoffman Test. The Court found that the finding of the Controller that the features of Claim 1 lacked any technical advancement in comparison with the prior arts D1 and D2 under Section 2(1)(ja) of the Patents Act as unreasoned and stands no merit. The Court found that the respondent had not carried out the 5-step analysis set out by the Division Bench of the Court in F. Hoffmann-La Roche Ltd. vs Cipla Ltd. Ltd to determine the obviousness or lack of inventive step.

Court's Decision

The Court set aside the Controller's order and allowed the appeal and remanded the matter to the Patent Office for fresh consideration of the objection under Section 2(1)(ja). The Court held that the finding of the Controller that the features of the Claim 1 lacks any technical advancement in comparison with the prior arts D1 and D2 under Section 2(1)(ja) of the Patents Act requires fresh analysis according to a 5-step test set out to determine the obviousness or lack of inventive step in 'Hoffman case', which was also recently reaffirmed by the Division Bench of the Court in the 'Tapas Chatterjee case'. The Court also gave an opportunity to the appellant to file an amended set of claims by characterising the technical feature in Claim 1.

Concluding Remarks

The Court in this case observed that the reading of the Specification along with the Drawings and dependent claims is essential to reach a finding on the clarity of the terms used in the claims. This case clears the mist surrounding the understanding and interpretation of words used in Section 10(4)(c) that "'claim or claims' of a complete specification are required to define the scope of the invention". The Court clarified that the said section in no way creates a distinction as to whether the definition should be in the independent or dependent claim.

The Court also observed that if the applicant is willing to make amendments to satisfy the Controller to meet the requirements of clearly defining the scope of the claimed invention under Section 10(4)(c), the opportunity to amend the claims should be given before the patent is refused on this ground. This case opens the door to filing an appeal against the adverse orders of the Controller even after filing a review petition under section 77(1)(f). However, expert advice should be sought on all the procedural possibilities to challenge any adverse decision of the Controller.

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