Delhi High Court Sets Aside Rejection Of JFE Steel's Patent For Electrical Steel Sheet Manufacturing Method

The Delhi High Court has set aside a patent rejection order passed against JFE Steel Corporation. It held that the Controller of Patents should ordinarily not reject a patent application on a single technical ground while leaving other objections undecided, as such an approach could unfairly consume the limited 20-year patent term through repeated remands and appeals.

A bench of Justice Tushar Rao Gedela observed that patent applications must be considered as a whole. It said the Controller ought to adjudicate on all objections raised in a hearing notice, including novelty and inventive step, rather than rejecting applications solely on preliminary or technical grounds.

“While objections may be raised and sustained till the stage of Hearing Notice, the final decision of the learned Controller, if rendered only on one or more objections, rather than all of them together, it would lead to injustice and unfairness. This is for the reason that a patent has a shelf life of only 20 years from the priority date, and if the final adjudication is not based on consideration of all objections and their responses, the patent applicant will be compelled to approach this Court for every objection not considered and remanded by this Court for fresh consideration. Possibly, the entire patent term may get consumed in this process, which is clearly avoidable,” the bench said.

The dispute arose from the rejection of Japanese steel manufacturer JFE Steel Corporation's Indian patent application. The application related to a method for manufacturing electrical steel sheets involving specific heating rates and annealing processes.

The application was rejected under Sections 10(4)(a) and 10(4)(c) of the Patents Act. The rejection was over alleged insufficiency of disclosure and lack of support in the specification concerning alloy compositions and heating processes.

However, the hearing notice had also raised objections relating to lack of novelty under Section 2(1)(j), lack of inventive step, and non-patentability under Section 3(d) of the Act.

Before the Court, JFE Steel argued that the Controller had rejected the application solely on the Section 10 grounds. It said its responses to the other objections were not examined.

The Court noted that the refusal order expressly stated that a decision on novelty and inventive step was not required. It found this approach unsustainable.

Drawing an analogy with civil courts, the Court said the Controller should ordinarily decide all objections raised and responded to by the patent applicant.

“It is crucial to bear in mind and it bears repetition, that the patent applications have a limited shelf life. It is also known and accepted that the patent applications involve a time-consuming process and sometimes take years at stretch to reach the stage of final hearing before the Controller. In such circumstances, it would not be fair to the patent applicants to be remanded back to the Controller for de novo consideration on objections raised, however not dealt with by the Controller,” the Court said.

The Court also observed that, as an appellate court, it cannot assume the role of a “person skilled in the art.” It said it cannot assess technical objections such as novelty or inventive step in the first instance.

Accordingly, the bench set aside the refusal order and remanded the matter to the Patent Office for fresh consideration. It directed the Controller to decide the application on merits within six months.

For Appellant: Advocates Vineet Rohilla and Ankush Verma,

For Respondent: Rohan Jaitley CGSC with Advocates Varun Pratap Shahi and Yogya Bhatia