Bombay High Court Sets Aside Patent Office Rejection, Orders Fresh Consideration of Medical Therapeutic Device Patent
The Bombay High Court has set aside the rejection of a patent application for a medical therapeutic device, directing the Patent Office to reconsider the matter afresh. The court found that the Patent Office had failed to follow mandatory statutory procedures under the Patents Act before refusing the application. A single bench of Justice Arif S Doctor passed the order on November 17,...
The Bombay High Court has set aside the rejection of a patent application for a medical therapeutic device, directing the Patent Office to reconsider the matter afresh. The court found that the Patent Office had failed to follow mandatory statutory procedures under the Patents Act before refusing the application.
A single bench of Justice Arif S Doctor passed the order on November 17, 2025, ruling that the Patent Office's refusal suffered from procedural irregularity and a lack of reasoning.
The patent was filed by an inventor, Hemant Karamchand Rohera, who had sought protection for his medical device. The Patent Office had rejected the application on February 18, 2021, citing insufficient disclosure and lack of supporting data.
Rohera challenged the decision, arguing that the office breached the law by failing to communicate specific objections or provide an opportunity to correct deficiencies before rejecting the application. He also contended that submitting working examples was not mandatory, and the office should have requested them if necessary instead of summarily refusing the patent.
The Patent Office countered that the petition lacked merit, pointing out that Rohera had previously filed a review petition which was not disclosed to the Court. It maintained that adequate opportunity of hearing had been provided and that the application was rightly rejected for failing disclosure requirements.
The Court disagreed. It ruled that the Patent Office was required to adopt a corrective and consultative approach and could not refuse the application without first communicating its objections to inventor under Section 14 of Patents Act, 1970 and thereafter giving an opportunity to amend under Section 15 of the Act. It noted that no such communication had been made, and the inventor was never informed of any deficiency before the rejection.
Criticizing the office's reasoning, the court observed that its order did not meet the standard of a speaking order, as it neither analysed prior art nor considered the inventor's post-hearing submissions.
Highlighting the relevant law, it said,
“The law, as crystallized in Coca-Cola Company v. Controller of Patents and Titan Umreifungstechnik GmbH v. Assistant Controller of Patents, requires that such an order must at the very least set out (i) the existing state of knowledge or the specific prior art relied upon; (ii) how the claimed invention is mapped to, or distinguished from, such prior art; and (iii) why, in light of that prior art and the material on record, the claimed invention is found to lack inventive step, sufficiency of disclosure, or other statutory requirements.”, the Court said.
The court also pointed out inconsistencies in the Office's reasoning, noting that it at one point claimed that the disclosure was insufficient yet simultaneously relied on it to assess invention against multiple prior art documents.
On the allegation that the inventor had suppressed the filing of a review petition, the court held that this did not amount to material suppression warranting dismissal, as the Patents Act allows both appeal and review, whether simultaneously or sequentially.
Consequently, the court set aside the Patent Office's refusal and directed that the patent application for the medical therapeutic device be reconsidered afresh by a different Controller.
Case Title: Hemant Karamchand Rohera v. Controller General of Patents and Designs & Anr.
Case Title: Commercial Miscellaneous Petition No. 11 of 2022
For the Petitioner: Advocates Prashant Shetty along with Narayan Abhishek Singh, Aditya Chitale, Sumedh Ruikar and Saikiran Mergu instructed by RK Dewan Legal Services.
For the Respondent: Advocate Niranjan Shimpi along with Advocate Rivaa Kadam.