Powers Of Patent Examiner To Raise New Objections During The Course Of Hearing


The Indian Patent law provides that prior to the grant of any patent each application for patent has to undergo a thorough process of examination once its published. According to Section 11B and Rule 24B (1) (i) the said process of examination begins by filing a request for examination within the timeframe of 48 months from the date of filing or the date of priority whichever is earlier by means of Form 18. As per Section 12 and Rule 28 (2) (ii) once the request for examination is received by the controller the controller further has to refer the said application along with the specifications and other related documents to the examiner. After receipt of such application the examiner has to prepare a report pertaining to that application within one month but not exceeding three months from the date of receipt of such application from Controller. After receiving the report, the controller has to dispose of the report within one month from the date of receipt. Later within one month from the date of disposal of report the controller has to raise first set of objections if any by means of first examination report and the same has to be intimated to the applicant.

patent og hearing delhi court

[Image Sources : Shutterstock]

The applicant later has to provide a response clarifying those objections within the time frame of 6 months from the date of receipt of such objections which may extend by 3 months, delaying which may result in abandoning of application. However, when those objections raised are contested by the applicant or in case after submission of reply to such objections by the applicant if the examiner is dissatisfied and raises further objections then those objections need to be communicated to the respondent and a notice of hearing giving reasonable time needs to be issued where the minimum time prescribed for preparation of such hearing is 10 days. But there is still an ambiguity on whether during the course of such hearing can the examiner directly raise further or additional objections. A detailed evaluation on this issue is expressed and anatomized further via a detailed analysis on decision of Delhi high court in matter of PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022.


  1. Whether during the course of hearing an examiner can raise further or additional objections?
  2. Whether without giving any prior notice for a hearing on an objection the controller can refuse the grant of patents?
  3. Whether its mandatory for the controller to give prior notice for the objections raised for hearing?


  1. Section 15 of the Patents Act 1970.
  2. Section 3(f) of the Patents Act 1970.
  3. Rule 30 of the Patents Rule 2003
  4. Rule 129 of the Patents Rule 2003.
  5. Clause l (i) Circular on “Examination of Patent Applications and Consideration of Report of Examiner by Controller” dated 21st September 2011.


The issue of raising further or additional objections while the hearing is already in progress was not been cleared upon until the Delhi High Court brought some perspicuity on it vide its judgment in PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022. In the instant case the patent application of the appellants was refused on the grounds provided under Section 15 of the Patents Act, 1970, (Herein after referred as “the Act”) and the same was subjected to a hearing. However, later during the time of hearing the examiner raised additional objections on the grounds provided under Section 3(f) of the Act without any prior notice. The appellants raised contentions on the same as the same was not only against the basic tenets of the principle of natural justice but also against the circular released by the Indian Patent Office on 21st September 2011 named “Examination of Patent Applications and Consideration of Report of Examiner by Controller”. Under the said circular the clause l (i) provides that during the time of hearing the examiner may stay present, however, such examiner shall not communicate with the applicant directly nor shall the examiner raise any additional or further grounds for refusal. In the current case, the rejection of the application was based on the collectively grounds of Section 15 and Section 3(f) and for the grounds raised under Section 3(f) any prior notice or intimation was not even provided which is totally in breach of the said circular. Apart from that it does not even stands true on the basic principle of natural justice that is Audi Alteram Partem which simply implies that the other party needs to be given an opportunity to be heard and a reasonable time shall be given to that party to prepare a defence for himself.

The primary ingredient of Audi Alteram Partem is Serving of Notice which will contain grounds of charge or objections according to which the opposite party will prepare their defence. In the instant the case the notice was served only pertaining to refusal on grounds of Section 15 and hence the party only prepared for defence for the said grounds and the grounds related to Section 3(f) which were raised in the hearing itself, the parties didn’t received any notice pertaining to the same nor did they got any time to defend themselves against the same, as a result their application was subjected to an outright rejection without following the due procedure prescribed by the law. As per Co-operative Society v. Andhra Pradesh Government, AIR 1977 SC 313 basically, a notice is a primary object that contains charge against which the opposite party has to prepare their defence, any hearing without providing a prior notice would lead violation of laws of natural justice. In addition, the court in Public Prosecutor v. K.P. Chandrashekaran, 1957 8 S.T.C. 6 (Mad) provided that the notice time shall give sufficient time to the person to prepare his defence and shall not be arbitrary in nature. In the instant case the parties not only were not provided with the prior notice on grounds for refusal under Section 3(f) but also were deprived of sufficient time required to file a reply to the additional objections raised, and hence the order of the patent office rejecting the application of the appellant was contrary to principle of natural justice.

Furthermore, if we look at the Patent rules of 2003, under the Rule 30 it clears provides that the controller needs to serve the applicant with atleast ten days prior notice before the hearing, and similarly the Rule 129 provides that the Controller before exercising any discretionary power that is likely to affect the patent application of the applicant has to provide a hearing chance to the applicant, and the same needs to be served with ten days’ notice period to which the applicant need to affirm if he will be able to attend on the said time and date or not. In the instant case all such due process and procedure prescribed in these rules were bypassed and the controller passed an order arbitrarily refusing the grant to the application. Also, if we see the decision of Delhi High Court in cases of Chemtura Corporation v. Union of India, (2009) 41 PTC 260 and Nippon Steel Corporation v. Union of India, 2011 SCC OnLine Del 669, the court clearly mandated a strict adherence to administrative requirements and procedures prescribed by the Patents Act, 1970 which in the instant case was clearly disregarded by the patent authorities.

The Delhi High Court in the case in hand referring to all such grounds, and without going into the merits of the case set aside the impugned order stating it to be vitiating the principles of natural justice and the norms provided in the circular and remanded the respondent authorities to go for a fresh consideration.


All in All, the judgment in the instant case can be considered as a watershed moment, as in numerous case it has been observed that the administrative authorities especially the patent office shrugs off the procedure established by law while deciding the competency of the patent applications. Such disregard of rules and procedure by the patent office not only makes the process for getting one’s inventions under patent regime cumbersome and clunky but it also discourages the inventors of this nation from approaching the patent office for protecting their invention. The decision of the Delhi High Court in the instant case will have a significant impact on rights of the patent applicants and will also act as a touchstone mandating the patent authorities to follow the due process prescribed by the law.

Author: Bhardwajsinh Raulji, a Student of Symbiosis Law School Pune,  in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.


  1. Patents Act, 1970
  2. Patents Rules, 2003
  3. Patents Office Circular on Examination of Patent Applications and Consideration of Report of Examiner by Controller, on 21st September 2011.
  4. PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022.
  1. Co-operative Society v. Andhra Pradesh Government, AIR 1977 SC 313.
  2. Chemtura Corporation v. Union of India, (2009) 41 PTC 260.
  3. Nippon Steel Corporation v. Union of India, 2011 SCC OnLine Del 669.

Leave a Reply



  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010