Bombay High Court Remands Pharmaceutical Patent Opposition, Sets Aside Patent Office Order As Unreasoned

The Bombay High Court has set aside an order of the Deputy Controller of Patents that had dismissed a post-grant opposition, finding that the decision contained no real reasoning and did not include the technical analysis required under the law.

In a judgment dated March 10, 2026, Justice Arif S. Doctor noted that the patent office had rejected the prior-art claim relied on by the opponent without explaining the basis for doing so. The Court said that because the order was appealable, the absence of reasons made it impossible to assess whether the decision was correct.

The Court observed that since the order was appealable, the absence of reasons rendered the decision unsustainable.

“Controller has not undertaken any technical analysis of the competing patents and instead merely recorded that D1 has 'not found an appropriate document within the meaning of Section 25(2)(c)', without recording any reason as to why or on what basis such a conclusion was reached. Thus, the impugned order is, on the face of it, unreasoned, let alone bereft of cogent reasoning,” the Court said.

Inventor Saurabh Arora had opposed a patent granted to a rival entity on the ground that his own earlier invention, identified as document D1, carried a prior priority date. He argued that while the impugned patent traced its priority to September 15, 2010, his provisional specification was filed on May 31, 2010, giving him an earlier priority date.

Arora contended that despite these undisputed dates, the Deputy Controller dismissed his opposition after nearly five years of proceedings by merely stating that D1 was not an “appropriate disclosure” under Section 25(2)(c) of the Patents Act without explaining the basis for that conclusion.

Counsel for the Deputy Controller argued that the order was legally valid because the petitioner's document existed only as a provisional specification on the relevant date and did not contain claims and therefore could not constitute a prior claim for the purpose of revoking the later patent. It was also submitted that the opposition had been decided after considering the recommendation of the Opposition Board and hearing both sides.

After examining the record, the High Court held that the statutory requirements for a post-grant opposition were prima facie satisfied since the earlier application relied on by Arora had an undisputed priority date of May 31, 2010, which preceded the priority date of the impugned patent.

The Court noted that despite recording these dates, the Controller had failed to explain why the prior-art document did not qualify for consideration.

The Court observed that the impugned order “reflects complete non-application of mind” and that “the impugned order is entirely bereft of reasons, and therefore the question of this Court assessing the correctness of such reasoning does not arise.”

“What the Controller is in effect seeking is for this Court to undertake the exercise of examining the matter afresh in the first instance. In my view, to countenance such a stand would amount to effectively permitting the Controller to abdicate its statutory duties under the provisions of the Patents Act by considering opposition proceedings and passing a reasoned order,” the Court said.

Holding that the order dated July 7, 2023, was unsustainable for want of reasons, the High Court allowed the petition, set aside the decision of the Deputy Controller, and remanded the matter for fresh consideration before a different Controller, keeping all rights and contentions of the parties open.