Court holds Assistant Controller's refusal of Glisten LLC's patent application violated natural justice by raising inventive step objection without proper notice to applicant
In a significant judgment delivered on October 1, 2026, the Delhi High Court quashed the refusal order of a patent application filed by Glisten LLC, titled "Gemstone Coating and Methods of Making and Using the Same," on grounds of procedural irregularity and violation of natural justice principles. The Court found that the Assistant Controller of Patents and Designs improperly refused the patent application under Section 15 of the Patents Act, 1970, without providing adequate notice or an opportunity to respond to the specific objections that ultimately led to rejection.
The patent application, filed in February 2020, sought protection for claims relating to coated gemstones. The examination process culminated in a First Examination Report (FER) issued in April 2023, which raised objections under Section 2(1)(ja) of the Act, specifically concerning the lack of inventive step in claims 1 to 18 based on prior documents D1 and D2. The appellant replied to the FER in January 2024, providing explanations and justifications for its claims.
A hearing notice was issued in June 2024 under Section 14 of the Act. Crucially, this notice limited the inventive step objection solely to claim no. 18, citing lack of working examples in the specification. In response, Glisten LLC withdrew claim no. 18 and proceeded with claims 1 to 17, believing that the inventive step objection to these claims had been resolved.
Contrary to this understanding, the Assistant Controller's refusal order dated January 23, 2026, rejected claims 1 to 17 on the ground that they lacked inventive step, holding that the claimed features were obvious in light of documents D1 and D2. The Court observed that this ground for refusal was not communicated in the hearing notice, and the appellant was never given a fair opportunity to address it.
The Court emphasized that the hearing notice is a critical document that communicates the objections surviving after considering the applicant's response to the FER. It narrows the scope of the dispute and informs the applicant of the case they must meet. Therefore, if the Controller intends to raise fresh objections or revive earlier ones, these must be clearly communicated, and the applicant must be afforded a real opportunity to respond before any adverse order is passed.
Citing the principles of natural justice and the statutory provisions of Sections 14, 15, and 80 of the Patents Act, the Court held that the refusal order was unsustainable as it was based on grounds not put to the applicant at the hearing stage. The Court relied on precedents including Biecco Lawrie Ltd. v. State of West Bengal, Canara Bank v. V.K. Awasthy, and recent Delhi High Court rulings such as Perkinelmer Health Sciences Inc. v. Controller of Patents and Phillip Morris Products S.A. v. Assistant Controller of Patents and Designs to reinforce the requirement of clear notice and opportunity to be heard.
The judgment clarified that merely filing written submissions or a general defense cannot substitute for clear and precise notice of the objections to be met. The Court noted that the appellant suffered prejudice because the deficiency related to the wear test data and lack of unexpected technical effect had never been brought to its attention.
Accordingly, the Court allowed the appeal, set aside the impugned refusal order, and restored the patent application to the file of the Assistant Controller for fresh consideration in accordance with law. The Court expressly refrained from commenting on the merits of the inventive step objection, leaving all rights and contentions of the parties open for re-examination.
This judgment serves as a critical reminder of the paramount importance of adherence to natural justice in patent prosecution proceedings, especially regarding the issuance of hearing notices that properly and fully inform applicants of the grounds of objection they must meet.
Bottom Line:
Patents Act, 1970 - Refusal of patent application on ground not carried into hearing notice violates Section 14, Section 15 read with Section 80 and principles of natural justice - Controller cannot refuse claims on inventive step without specifically putting applicant to notice of surviving objection and affording fair opportunity of hearing - Matter remanded for fresh consideration.
Statutory provision(s):
Patents Act, 1970 - Sections 2(1)(ja), 14, 15, 80, 117A
Glisten LLC v. Assistant Controller of Patents & Designs, (Delhi) : Law Finder Doc Id # 2994155
