Synopsis

The petitioner’s patent application was remanded by the High Court for a fresh hearing after the Controller conceded that certain objections had been raised for the first time during the hearing without affording the petitioner an opportunity to respond. On remand, the Controller issued a hearing notice introducing entirely new objections and prior art references (D1 to D6) that had never previously formed part of the record. The petitioner sought clarification that the remand was limited to a fresh hearing on existing objections and did not permit reopening of the examination process. The High Court allowed the application, holding that: (i) the remand order was limited to curing the procedural defect of denial of natural justice; (ii) the Controller could not introduce fresh objections or new prior art; (iii) the examination stage had concluded, and the remand did not grant a carte blanche to restart prosecution; (iv) the principles governing remand in civil litigation apply equally in patent proceedings.

1. Heading of the judgment

High court of judicature at bombay ordinary original civil jurisdiction

Interim application no. 1778 of 2026 in commercial miscellaneous petition no. 61 of 2025

Qualyst transporter solutions llc (applicant/petitioner) vs. The assistant controller of patents & designs (respondent)

Coram: hon’ble mr. justice arif s. doctor

Core Law: Patents Act, 1970 – Sections 12 to 15, 18, 43 – Examination of patent applications – Scope of remand – Principles of natural justice – Introduction of fresh objections after remand – Circular No. 4 of 2011.

Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction)
Coram: Hon’ble Mr. Justice Arif S. Doctor (Single Judge)
Date of Judgment: June 15, 2026 (Reserved on May 8, 2026)
Case No.: Interim Application No. 1778 of 2026 in Commercial Miscellaneous Petition No. 61 of 2025

2. Legal framework

Major laws and provisions involved:

• Patents Act, 1970 – Sections 12 to 15 (examination of applications), Section 18 (opposition), Section 43 (grant of patents)

• Code of Civil Procedure, 1908 – Section 151 (inherent powers of court)

• Principles of natural justice – audi alteram partem

• Circular No. 4 of 2011, dated 21st September 2011 – Examination of Patent Applications and Consideration of Report of Examiner by Controller – Clause (k) (objections may be communicated through hearing notice)

Subject matter of the judgment:

Whether, upon remand of a patent application for a fresh hearing solely on the ground that objections were raised for the first time without opportunity to respond, the Controller is entitled to introduce entirely new objections and prior art references that had never previously formed part of the record, or whether the remand is confined to curing the procedural defect by affording a fresh hearing on the existing objections.

Key legal principles applied:

• Scope of remand is determined by the remand order: The authority to which a matter is remanded must act strictly within the confines of the remand order. It cannot proceed on the footing that the entire matter is reopened or permit new issues that did not form part of the original

... Upgrade to a Premium Plan to view the full judgment.