Saint Gobain TM K K filed an appeal before the Delhi High Court challenging the order dated 30.07.2021 passed by the Assistant Controller of Patents and Designs, rejecting its Indian Patent Application No. 201717018424. The appellant argued that the impugned order lacked independent reasoning and was essentially a verbatim reproduction of an order dated 04.05.2021 issued by the European Patent Office (EPO) in a separate proceeding concerning Application No. 15881134.9-1108, where the appellant was also the applicant.
The procedural background reveals that the appellant’s patent application before the Indian Patent Office was rejected primarily on the basis of prior art references D1: US 2009/0176642 A and D2: JPH092870 A. The appellant contended that these prior arts were entirely different from those considered by the EPO, which were WO 2015/025901 A1 and WO 2016/056146 A1. Further, it was highlighted that despite the objections raised, the same appellant was ultimately granted the patent by the EPO for the corresponding invention, demonstrating that the claims were indeed patentable after due consideration abroad.
The core dispute was whether the Controller’s rejection of the Indian patent application was lawful and appropriately reasoned, especially when the grounds cited closely mirrored those in the EPO's order without adequately addressing the specific prior arts involved in India. The appellant alleged that the rejection was mechanical, failed to consider the distinct prior art references, and did not analyze the unique technical features of the invention.
Upon examining both the EPO’s decision and the Controller’s order, the High Court noted significant textual similarities between them. The Court further observed that the prior arts examined by the EPO differed materially from those considered by the Indian Controller, yet the reasoning in both orders appeared substantially identical.
In its decision, the Delhi High Court held that the Controller's order suffered from non-application of mind and did not reflect due consideration of the Indian prior art documents. The Court set aside the impugned order dated 30.07.2021 and restored the appellant’s Patent Application No. 201717018424 to its original status. The matter was remanded back to the Assistant Controller of Patents and Designs for a de novo hearing. The Controller was directed to list the matter for hearing within two weeks and dispose of the application on or before 30.08.2025 by passing a reasoned order after considering all arguments and without granting unnecessary adjournments.
