Stromag filed for a patent application no. 179/KOL/2013 in the year 2013 for an invention titled “Hydraulically Actuatable Disk Brake and Azimuth Drive”. The Controller issued an examination report objecting to the grant of the patent application on the grounds of lack of inventive step, non-patentable subject matter, and insufficiency of disclosure. Stromag filed their response and claim amendments to address the objections of the examination report. Subsequently, a hearing was appointed by the Controller, and Stromag was directed to file their written submissions along with the amended claims. However, the Controller refused the grant of patent application, on the grounds that the claimed invention lacks an inventive step and is obvious in view of the technologies discussed in the prior art.

Aggrieved by the Controller’s Order, Stromag filed an appeal before the Calcutta High Court and argued that the rejection was unfair as the Order lacked proper reasoning for refusal. The appeal also alleged that the Controller had simply copied and pasted the portions (paragraphs) of prior art, without any reasoning, and rejected the patent application with a single sentence. The key points of contention were whether Stromag was given a fair chance to respond, whether the Order explained why the claimed invention was considered obvious, and whether the Controller wrongly combined different prior arts.

Considering the submissions made by Stromag and reviewing the case facts, the Court ordered to set aside the Order passed by the Controller.  The Court held that the Order lacked proper reasoning and merely reproduced parts of the prior arts to hold that the claimed invention is devoid of inventive step. The Court clarified that any Order passed by a quasi-judicial body such as the Indian Patent Office (IPO), must include clear explanations and the prescribed procedure must be properly followed. The Court also remanded the matter to a different hearing officer at the IPO for a fresh decision within four months from the Court’s decision.

The High Court’s ruling emphasizes and reinforces that the IPO must follow fair procedures and give well-reasoned decisions while disposing of cases.