Delhi High Court Sets Aside Patent Refusal, Says New Objections In Final Order Violate Natural Justice

Justice Manmeet Pritam Singh Arora held on March 23, 2026, that the impugned order was procedurally infirm as it deprived the applicant of a fair opportunity to address the specific grounds of refusal.

"If Respondent No. 2 introduces new grounds for refusal for the first time in the final order, the applicant is effectively deprived of an opportunity to clarify the claims, amend the specification, or address Respondent No. 2's concerns through submissions. Such a course of action runs contrary to the fundamental requirement of fairness and transparency embedded in quasijudicial decision-making."

The Court observed that while patent examination is an interactive process, a decision based on uncommunicated concerns regarding the scope of claims under Section 10(4)(c) and an unreasoned analysis of inventive step under Section 2(1)(ja) cannot be sustained in law.

Wirtgen GMBH had contended that their invention relates to a specialized bit holder and base part for milling machines, with novelty lying in the unique alignment and orientation of support surfaces.

The company argued that the Controller's refusal was arbitrary, as it acknowledged that the primary prior arts (D1-D3) did not disclose the inventive step, yet concluded the invention was obvious without mapping the features of the fourth prior art (D4).

In its findings, the High Court held that several technical objections—such as those relating to terms like “transverse central plane” and “extend locally”—appeared for the first time in the final order and were never raised in the First Examination Report (FER) or the hearing notice.

The Bench remarked that such a course of action runs contrary to the rule of audi alteram partem, which mandates that an applicant must be afforded a fair opportunity to meet the objections that form the basis of a refusal.

Regarding the rejection for lack of inventive step, the Judge noted that the Controller failed to follow the prescribed five-step test and provided no reasoned analysis explaining why a person skilled in the art would combine the cited prior arts to arrive at the specific structural arrangement of the “Bit Holder” claimed by the appellant.

“Patent law requires that the conclusion of lack of inventive step as required under Section 2(1)(ja) of the Patents Act is to be supported by a reasoned analysis demonstrating why the Person Skilled in the art would have arrived at the claimed invention without inventive effort. The impugned order merely states that such a combination would be possible, without explaining why the skilled person would be led to modify the structures disclosed in D1-D3 in light of D4 to produce the particular angular and symmetric supporting surface arrangement claimed in the present invention,” the court remarked.

Accordingly, the Court set aside the order dated November 25, 2019, and remanded the matter for a de novo consideration.

The court held that the Patent Office must issue a fresh hearing notice demarking all objections, including the newly introduced ones, and finish the proceedings preferably within four months.