
An important step during patent prosecution in India is the hearing. As the Indian Patent Office (IPO) tends to issue only a single examination report, hearings before the Controller are common. The documentation issued by the IPO for a hearing in India is usually just the examination report, and nothing else. No draft claim amendments intended for discussion are filed beforehand, as followed by the European Patent Office (EPO), nor does the the examiner issue an interview summary, as in the United States Patent and Trademark Office (USPTO). India lacks a structured hearing procedure, which can often lead to misunderstandings and confusion.
A recent judgment of the Madras High Court, Natural Medicine Institute of Zhejiang Yangshengtang Co. Ltd. v. Deputy Controller of Patents and Designs (CMA (PT) No.171 of 2023, judgment dated 12 August 2025), illustrates how miscommunication between a Patent Agent and the Controller can lead to the rejection of an application.
Background
The appellant filed Indian Patent Application No. 6275/CHENP/2011, titled “A Mordant and Hair Coloring Products Containing the Same.” Upon examination, the IPO issued a First Examination Report (FER) raising novelty and inventive step objections. The appellant responded, but the objections were maintained in a subsequent hearing notice.
Following the hearing, the applicant’s Patent Agent submitted two sets of amended claims, Set A and Set B, via email. The Controller responded with an email stating “Ok file.” The Agent reasonably interpreted this as an approval of both claim sets, and after instructions from and on behalf of the appellant, consolidated the two claim sets and filed them formally along with written submissions.
However, the Controller rejected the application with a terse order stating that the claims and submissions filed did not tally with the claims that had been “approved.”
Arguments
The appellant filed an appeal under Section 117A of the Indian Patents Act, 1970 (the Act) before the Court, arguing:
- The Controller’s “Ok file” email constituted approval of both claim sets, and the subsequent filing merely combined them.
- The rejection order lacked substantive reasoning for rejecting the amended claims.
- The invention had been granted patents in several major jurisdictions, including the US, China, Japan, and the EPO, which should have been a persuasive consideration.
On its part, the IPO argued that the application was rejected because the amended claims went beyond the scope of the original specification.
The decision
The Court observed that the IPO’s rejection order provided no reasons. More importantly, the Court found that the appellant reasonably construed the Controller’s “Ok file” email as acceptance of both claim sets, and the applicant’s act of combining the sets did not justify outright rejection. The Court further stressed that refusals of patent applications must be supported by reasons, particularly when claims have already been accepted in other jurisdictions. While foreign grants are not binding, they are persuasive and cannot be ignored without explanation. Accordingly, the Court set aside the Controller’s order and remanded the matter for reconsideration to the IPO, emphasising that the matter be handled by a different officer this time. The appellant was also granted liberty to amend claims under Section 59 of the Act.
Takeaways
This decision is significant for several reasons. Firstly, it reiterates that the IPO must provide clear, reasoned decisions when rejecting applications. A bare rejection without explanation is not sustainable. Secondly, this case has highlighted the importance of foreign grants: while not determinative, corresponding grants in multiple advanced jurisdictions is a relevant “factor to be reckoned” by the IPO in the adjudication of an application.
Finally, the case offers a cautionary tale for practitioners. The rejection could have been avoided in the first place had the applicant explicitly sought clarification from the Controller as to what their email meant, and which claim set was acceptable. At the same time, the decision underscores the need for clear and precise communication with the IPO, and the importance of seeking clarification whenever doubts exist. Applicants and Patent Agents alike must exercise due care in their interactions with the IPO, ensuring that instructions are properly received and understood, leaving no room for uncertainty or misinterpretation.