In Natural Medicine Institute of Zhejiang Yangshengtang Co. Ltd. vs The Deputy Controller of Patents and Designs [(T) CMA (PT) No.171 of 2023], the Madras High Court by order dated August 12, 2025 allowed the appeal and directed the patent application filed by Natural Medicine Institute of Zhejiang Yangshengtang Co. Ltd for "A Mordant And Hair Coloring Products Containing The Same" (6275/CHENP/2011) to be reconsidered by a different Controller.
Factual Matrix
The patent application by Natural Medicine Institute of Zhejiang Yangshengtang Co. Ltd., for "A Mordant and Hair Coloring Products Containing the Same" was refused by the Controller on the ground that the amended claims travelled beyond the scope of the complete specification, including the claims as originally filed. In the operative part of the order, the Controller stated that "The agent of applicant before filing final post hearing submission sent amended claims through email on 06.10.2017, which the Controller approved on 09.10.2017 through email. But contrary to approved claims the agent of applicant filed their own claims on 17.10.2017." The Controller rejected the set of claims filed by joining Set A (Claims1-6) and Set B (Claims 7-13) for the reason that the claims filed on October 17, 2017, are contrary to claims approved by the Controller on October 9, 2017. Therefore, Natural Medicine Institute of Zhejiang Yangshengtang Co. Ltd. filed an appeal against the order of the Controller.
Appellant's Argument
The appellant contended that they sent two sets of claim amendments along with the written submission (Claim set A contains 6 claims which match claims 1 to 6 of the rejected claims. Claim set B contains 12 claims which match claims 7 to 13 of the rejected claims) as the respondent approved both sets of amendments by stating "Ok file" in an email dated October 9, 2017. The appellant further submitted that the said claims were granted a patent in multiple jurisdictions, including the EPO.
Court's Findings
The Court found that apart from stating that the amended claims do not tally with those approved by the Controller on October 9, 2017, no other reason has been provided for rejecting the patent application. The Court noted further that the claims appended to the EPO grant are virtually the same as those rejected by the Controller. The Court observed that the decision of the EPO is not binding on the Controller, but it is certainly a factor to be reckoned with while adjudicating the patent application. The Court ruled that in the absence of any reasons in support of the conclusion, the impugned order cannot be sustained.
Reconsideration Ordered by the Court
Setting aside the order of the Controller, the Court ordered that the matter be remanded for reconsideration by an officer other than the officer who issued the impugned order. The Court further stated that it shall be open to the appellant to amend its claims in accordance with Section 59 of the Patents Act, 1970. The respondent was directed to issue a hearing notice in terms substantially identical to the earlier hearing notice to fix a date for hearing upon remand. The Court directed that a reasonable opportunity to the appellant shall be provided, and the respondent shall be required to issue a reasoned decision within a period of four months from the date of receipt of a copy of this judgment.
Takeaways
The Madras High Court once again reiterated that the rejection of a patent shall be supported by cogent reasons. It was ruled that the rejection of a patent for filing a different set of claims, as agreed by the Controller, cannot sustain the conclusion of rejection of a patent which otherwise had been granted in other jurisdictions. The Court observed that the grant of a patent in other jurisdictions is not binding on the Controller; however, it is certainly a factor to be reckoned with while adjudicating the patent application. The Court rightly set aside the order and directed reconsideration by a different Controller to preclude the possibility of predetermination. The appellant in this case received an opportunity to amend its claims in accordance with Section 59 of the Patents Act, 1970.
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