Delhi High Court Sets Aside Glisten LLC's Patent Refusal, Says Grounds Must Be Notified Before Hearing

The Delhi High Court on 1 October set aside the Patent Office's refusal of an application filed by US company Glisten LLC for a gemstone coating invention and remanded the matter for fresh consideration.

Justice Purushaindra Kumar Kaurav observed that a “refusal founded on a ground not put to the applicant before the hearing cannot be sustained”.

Glisten filed a patent application in India in 2020 titled “Gemstone Coating and Methods of Making and Using the Same”. The First Examination Report issued in 2023 objected that claims 1 to 18 lacked inventive step, as they were obvious in view of two prior-art documents.

The company responded in January 2024. The hearing notice issued in June 2024, however, raised the inventive-step objection only against claim 18, on the ground that the specification did not contain working examples to support it.

Glisten withdrew claim 18 and proceeded with claims 1 to 17. On 23 January 2026, the Assistant Controller of Patents and Designs refused the application under Section 15 of the Patents Act, 1970, holding claims 1 to 17 obvious in view of the prior-art documents, even though the hearing notice had raised the inventive-step objection only against claim 18.

In its appeal, Glisten contended that it had never been informed that the inventive-step objection continued to apply to claims 1 to 17. It argued that it could have responded more effectively had the objection been communicated to it.

The Patent Office argued that the Controller could examine all aspects of an application while passing the final order, that all claims remained open for consideration, and that the application lacked inventive step in any event.

The Court clarified that it was not examining whether the claims involved an inventive step, but whether Glisten had been given a fair opportunity to address the ground on which the application was refused. It accepted the Patent Office's contention only to a limited extent. It held:

“The Controller is not bound to grant a patent merely because a particular objection does not find mention in the hearing notice.”

However, it added that “if the Controller proposes to refuse the application on a ground, that ground must first be put to the applicant. The breadth of the power under Section 15 does not dispense with the requirement of notice under Section 14.”

The Bench held that an applicant is entitled to rely on the hearing notice as issued. If the Controller intends to revive an objection that was not carried forward in the notice or raise a fresh objection, the applicant must be informed and given a meaningful opportunity to respond.

Applying this principle, it noted that once claim 18 was withdrawn, the only inventive-step objection mentioned in the hearing notice no longer had any claim to which it could apply. The refusal, therefore, “rests entirely on a ground which was not carried into the hearing notice”.

Accordingly, the High Court allowed the appeal, set aside the order dated 23 January 2026 and restored the patent application to the Controller for fresh consideration in accordance with the Patents Act and the applicable Rules.

It left all rights and contentions of the parties open. It also clarified that its observations were confined to the principles of natural justice and should not influence the decision on the merits of the patent application.