[Cites 11, Cited by 0]
Bombay High Court
Saurabh Arora vs The Controller Of Patents And Designs on 10 March, 2026
Digitally
signed by
2026:BHC-OS:6327
MEERA
MEERA
MAHESH
MAHESH JADHAV 4-COMMP-46-2025
JADHAV Date:
2026.03.11
19:07:31
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION JURISDICTION
COMM. MISC. PETITION NO. 46 of 2025
Saurabh Arora .... Petitioner
Versus
Deputy Controller of Patents & Anr. .... Respondents
_______
Mr. Hiren Kamod a/w. Mr. Nishank Barolia, Mr. Abhijeet Deshmukh, Mr.
Tapan Shah, Mr. Shon Gadgil i/b. Khurana & Khurana, for the Petitioner.
Mr. Niranjan Prabhakar Shimpi a/w. Revaa Kadam and Ms. Bhagyashri
Waghmare, for Respondent No.1.
Mr. Himanshu Kane a/w. Kanak Kadam and Ms. Sharwani Kane i/b. W. S.
Kane & Co., for Respondent No.2.
_______
CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 23rd FEBRUARY, 2026
PRONOUNCED ON : 10th MARCH, 2026
JUDGEMENT
1. The present Commercial Miscellaneous Petition impugns an Order dated
7th July 2023 ("impugned order"), by which Respondent No. 1, i.e., the
Deputy Controller of Patents, has dismissed the post-grant opposition
Meera Jadhav
4-COMMP-46-2025
filed by the Petitioner in respect of Patent No. IN 283059 ("impugned
patent") which was granted to Respondent No. 2.
Background and Challenge:
2. The Petitioner's post-grant opposition was under Section 25(2)(c) of the
Patents Act 1970 ("the Patents Act") and was based on an Indian Patent
Application bearing no. 1249/DEL/2010, i.e., the prior art ("D1") cited
by the Petitioner (which was subsequently granted as Patent No.
IN568478), of which the Petitioner was one of the inventors.
3. It is the Petitioner's case that despite filing detailed pleadings in the
opposition proceeding, the post-grant opposition proceedings came to be
disposed of after five years on the sole ground that the prior art cited by
the Petitioner cannot be considered as an "appropriate disclosure" as per
the provisions of Section 25(2)(c) of the Patents Act for establishing
priority.
4. It is the Petitioner's case that Respondent No. 1 has passed the impugned
order without giving any reasons and without even considering or
Meera Jadhav
4-COMMP-46-2025
assessing the invention claimed in the impugned patent vis-à-vis the
invention claimed in the prior art cited by the Petitioner.
Submissions on behalf of the Petitioner:
5. Mr. Kamod, learned counsel appearing on behalf of the Petitioner, at the
outset invited my attention to Section 25(2)(c) of the Patents Act to point
out that the post-grant opposition requires the following legal and
technical requirements to be fulfilled in order to uphold an opposition to
a patent, viz.
Legal Requirements:
i. that there is an invention for which an application for a patent has been
made in India;
ii. that such prior art document must be published on or after the priority
date of the claim of the impugned patent;
iii. the claim of the prior art document has a priority date that is earlier
than that of the claim of the impugned patent;
Meera Jadhav
4-COMMP-46-2025
Technical requirements:
iv. that the invention as claimed in the claims of the patent is 'claimed in
any claim' of the patent application of the prior art document.
6. In the above context, Mr. Kamod then invited my attention to the
following bibliographic particulars of the impugned patent and the prior-
art document D1, which are as follows:
Impugned Patent Prior-Art (D1)
by the Respondent No. 2 by the Petitioner
Provisional Specification 15th September 2010 31st May 2010
(priority date)
Complete Specification 3rd September 2011 23rd March 2011
(filing date)
Publication date 21st June 2013 2nd March 2012
7. Mr. Kamod then invited my attention to Section 11(2)(a) of the Patents
Act, to point out that where a complete specification is filed pursuant to a
single application accompanied by a provisional specification, and the
claim is fairly based on the matter disclosed therein, the priority date of
such claim shall be the date of filing of the relevant provisional
specification. Mr. Kamod therefore submitted that in the present case the
Meera Jadhav
4-COMMP-46-2025
priority date of D1 would be 31st May 2010, being the date on which the
provisional specification in respect of D1 was filed. He then pointed out
that the impugned order itself recorded that D1 had a priority date of 31st
May 2010 and also notes that the claims are identical, neither of which
was disputed by Respondent No. 2. He thus submitted that it was an
undisputed position that D1 had a priority date earlier than that of the
impugned patent.
8. Basis the above, Mr. Kamod submitted that the legal requirement for
provision of Section 25(2)(c) was squarely met by the Petitioner. He then
pointed out that insofar as the technical requirement was concerned,
Respondent No. 1 had not considered the same at all and had in fact, for
the reasons best known to Respondent No. 1, recorded the following
finding viz.
"9. It is further not examined on the technical disclosure being in
the para 8. Document D1 is not found an appropriate document
within the meaning of Section 25(2)(c)".
Meera Jadhav
4-COMMP-46-2025
9. Mr. Kamod submitted that the impugned order had thus been passed by
merely recording that D1 was not an "appropriate disclosure" within the
meaning of Section 25(2)(c), without assigning any reasons whatsoever
as to how or why such a conclusion was arrived at. He submitted such a
finding, was particularly untenable in view of the fact that D1 had a
publication date of 2nd March 2012, a priority date of 31st May 2010, and
contains claims identical to those of the granted patent, all of which were
accepted. He thus submitted that the impugned order was required to be
set aside, as the same was a wholly unreasoned and non-speaking order.
10. Mr. Kamod then submitted that reasons constitute the essence and
foundation of every judicial or quasi-judicial determination, and that an
order which is bereft of cogent reasons is unsustainable and becomes
vulnerable to challenge. He submitted that a litigant is entitled to know
the reasons which have weighed with the authority in arriving at a
particular conclusion, and also an appellate court could only assess the
correctness (or otherwise) of an order if the same contained reasons. In
support of these contentions Mr. Kamod placed reliance upon the
Meera Jadhav
4-COMMP-46-2025
decisions in M/s. Woolcombers of India Ltd. v. Woolcombers Workers
Union and Anr. 1, S.N. Mukherjee v. Union of India 2, and Assistant
Commissioner, Commercial Tax Department v. Shukla & Brothers 3.
11. Mr. Kamod also submitted that the impugned order reflected complete
non-application of mind. He pointed out that Respondent No. 1 had
expressly acknowledged that D1 was published on 2nd March 2012, that it
carries a priority date of 31st May 2010, which was earlier than that of the
impugned patent, and also that the claims were identical. In these
circumstances, he submitted that there was no conceivable basis to
conclude that D1 was not an "appropriate disclosure" within the meaning
of Section 25(2)(c).
12. He thus submitted that the Petition be allowed.
Submissions on behalf of Respondent No. 1:
13. Mr. Shimpi, learned counsel appearing on behalf of the Respondent
No.1, submitted that the Petition was wholly misconceived, not
maintainable and liable to be dismissed in limine. He submitted that the
(1974) 3 SCC 318.
(1990) 4 SCC 594.
(2010) 4 SCC 785.
Meera Jadhav
4-COMMP-46-2025
impugned order was passed strictly in accordance with Section 25(2)(c)
of the Patents Act, after due consideration of the pleadings, documents,
and the recommendation of the Opposition Board as well as the oral and
written submissions of the parties.
14. Mr. Shimpi submitted that the Petitioner had filed a provisional
application, being No. 1249/DEL/2010, on 31st May 2010 without any
claims, and Respondent No. 2 had thereafter filed its own provisional
application, being No. 2553/MUM/2010, on 15th September 2010, and
both parties subsequently filed complete specifications on 6 th September
2011. He submitted that the Petitioner's application was published on 2 nd
March 2012, whereas Respondent No. 2's application was published on
24th June 2013, and Patent No. IN 283059 was ultimately granted to
Respondent No. 2 on 2nd May 2017. The Petitioner thereafter filed a post-
grant opposition under Section 25(2)(c) on 27th April 2018, which came
to be rejected by the impugned order dated 7th July 2023 after the
constitution of an Opposition Board, issuance of a recommendation and
hearing both sides.
Meera Jadhav
4-COMMP-46-2025
15. Mr. Shimpi submitted that the Petition proceeds on a fundamental
misreading of Section 25(2)(c). He submitted that Section 25(2)(c)
contemplates opposition only where the invention claimed in the
impugned patent is claimed in a complete specification, published on or
after the priority date and having an earlier priority date than that of the
impugned patent. He submitted that the statutory requirement was clear
that a prior claim must be based on claims contained in a complete
specification.
16. According to Mr. Shimpi, the Petitioner's reliance on Document D1
(Application No. 1249/DEL/2010) was legally untenable because, on the
relevant priority date, D1 existed only as a provisional specification and
admittedly contained no claims as required under Section 10(4)(b) and (c)
of the Patents Act. A provisional specification he submitted, by its very
nature, does not define the scope of protection and cannot constitute a
prior claim under Section 25(2)(c). He submitted that this position has
been correctly appreciated in paragraphs 8 and 9 of the impugned order.
Meera Jadhav
4-COMMP-46-2025
17. He further submitted that although the Petitioner's provisional
specification was filed on 31st May 2010, its complete specification was
filed only on 6th September 2011 and published on 2nd March 2012.
Respondent No. 2 had filed its provisional application on 15th September
2010 and its complete specification on 06th September 2011, i.e., within
the statutory period. He pointed out that the Controller has also taken into
consideration Respondent No. 2's International Application No.
PCT/IB/2011/053974 dated 12th September 2011 while deciding the issue,
as reflected in the impugned order.
18. Mr. Shimpi then, without prejudice, submitted that even assuming D1
could be considered as prior art, the claims in the two specifications were
materially different. He submitted that the Petitioner's Claim 1 relates
broadly to a "self-emulsifying drug delivery system" covering
curcuminoids as a class, whereas Respondent No. 2's Claim 1 is directed
to a "stable pharmaceutical composition of curcumin" with specific
compositional ratios and concentrations. He submitted that a priority
under Section 25(2)(c) requires the claimed subject matter to be identical
Meera Jadhav
4-COMMP-46-2025
and not mere similarity or an overlap. In the present case he submitted
that the claims were different and therefore Section 25(2)(c) did not apply.
19. Mr. Shimpi further submitted that the Opposition Board was constituted
strictly in accordance with Section 25(3), and its recommendation
correctly held that Document D1 could not qualify as a prior claim. He
submitted that the Controller had, after affording both parties, full
opportunity of hearing and considering their written submissions,
independently evaluated the matter and passed a reasoned order.
20. Mr. Shimpi placed reliance upon the decisions of the Hon'ble Supreme
Court in the case of Zarif Ahmad v. Mohd. Farooq4 and Maya Devi v.
Raj Kumari Batra & Ors.5 to submit that the Appellate Court is not
always required to remand a matter merely because the order under
challenge is deficient in reasoning. He pointed out that the Hon'ble
Supreme Court had, in the case of Zarif Ahmad, held that an Appellate
Court, particularly while exercising appellate jurisdiction, could itself
examine the material on record and render a final decision where the facts
(2015) 13 SCC 673.
(2010) 9 SCC 486.
Meera Jadhav
4-COMMP-46-2025
were clear and no further adjudicatory exercise was required, instead of
mechanically remanding the matter back. Similarly, he pointed out that in
the case of Maya Devi, the Hon'ble Supreme Court had observed that
while recording of reasons is essential, the question as to whether to
remand the matter or to decide it on merits lies within the discretion of the
Appellate Court, depending on the nature of the defect and the adequacy
of the material available on record. He thus submitted that given the
narrow compass of facts in the present case, this Court could take up and
decide the issue without remanding the matter back in the event the Court
found any infirmity in the impugned order, however reiterating that there
was infact none.
21. Basis the above, Mr. Shimpi submitted that the present Petition under
Section 117A of the Patents Act was devoid of merit and the impugned
order dated 7th July 2023 warrants no interference.
Submissions on behalf of the Petitioner in Rejoinder:
22. In rejoinder, Mr. Kamod submitted that the contentions advanced on
behalf of Respondent No. 2 were wholly untenable. He submitted that
Meera Jadhav
4-COMMP-46-2025
Respondent No. 2 had inter alia contended (i) that there was no
requirement for Respondent No. 1 to undertake any technical analysis of
the claims of D1 and the claims of the impugned patent, since the
differences between them were obvious, and therefore no separate
reasoning was necessary, and (ii) that, having regard to the stage of the
proceedings and the remaining term of the patent, no useful purpose
would be served by remanding the matter, and that this Court ought
instead to decide the Petition on merits.
23. Mr. Kamod submitted that the stand of Respondent No. 1 could not be
accepted for several reasons. First, the present proceedings were appellate
in nature and arise from the impugned order, and therefore this Court was
not exercising original jurisdiction but was required to examine the
correctness and legality of the reasoning adopted by Respondent No. 1.
Second, in appellate proceedings, the Court must assess the validity of the
reasons furnished by the authority who passed the impugned order and in
the present case, he pointed out that, admittedly, not a single reason has
been recorded by Respondent No. 1 for rejecting the Petitioner's
Meera Jadhav
4-COMMP-46-2025
opposition under Section 25(2)(c). Third, a technical comparison of the
claims of D1 and those of the impugned patent were essential for
determining whether the requirements of Section 25(2)(c) were satisfied.
Such an analysis was required to be undertaken by Respondent No. 1 in
the first instance, which had admittedly not been done in the present case.
Fourth, if the differences between the claims were indeed so obvious, as
suggested by Respondent No. 2, there would have been no occasion for
the opposition proceedings to remain pending for nearly five years.
Finally, he submitted that in the absence of any recorded reasons, the
Court had no material on the basis of which the Court could evaluate the
correctness of the impugned order. In these circumstances, Mr. Kamod
submitted that the only appropriate course would be to set aside the
impugned order and remand the matter for fresh consideration in
accordance with law.
24. Mr. Kamod then, in dealing with the decision of the Hon'ble Supreme
Court in Zarif Ahmad v. Mohd. Farooq submitted that reliance upon the
same by Respondent No. 3 was wholly misplaced. He pointed out that in
Meera Jadhav
4-COMMP-46-2025
Zarif Ahmad, the Hon'ble Supreme Court was dealing with a civil dispute
in the context of a second appeal, where the High Court had reversed
concurrent findings and restored the decree of the trial court. He thus
pointed out that the issue before the Hon'ble Supreme Court in that case
pertained to the scope of appellate interference and whether remand was
warranted in the facts of that case and therefore the said decision arose in
a completely different factual and statutory context and would have no
application to the facts of the present case more so in the context of
proceedings involving revocation of a patent under the Patents Act in
which the Controller was duty-bound to undertake a detailed legal and
technical analysis and to record clear reasons in support of the conclusion
reached. He submitted that the absence of such reasoning cannot be cured
by inviting this Court to undertake the exercise in the first instance. He
thus submitted that the decision in the case of Zarif Ahmad would have
absolutely no application to the facts of the present case.
25. Mr. Kamod then, in dealing with the decision in the case of Maya Devi
v. Raj Kumari Batra & Ors., pointed out that the said decision infact
Meera Jadhav
4-COMMP-46-2025
advances the Petitioner's case rather than that of Respondent No. 2. He
pointed out that the Hon'ble Supreme Court had specifically noted the
importance of recording reasons, particularly where an order is subject to
appeal, and had observed that the Appellate Court must have the benefit
of examining the reasons which weighed with the authority passing the
order. He submitted that this principle squarely applies in the present case,
where the impugned order is appealable under Section 117A of the Patents
Act. He then also pointed out that the Hon'ble Supreme Court had, in the
said case, specifically recognised that the question of remand was
discretionary and that such discretion arises only where the original
authority had undertaken a reasoned adjudication and the Appellate Court
is in a position to examine the material based on which an order was
passed. In the present case, he reiterated that the Controller had not
provided any technical analysis or reasoning for rejecting the Petitioner's
ground under Section 25(2)(c). Therefore, there was no basis or material
for this Court to assess, and the impugned order must be set aside, with
the matter remanded for fresh determination.
Meera Jadhav
4-COMMP-46-2025
Reasons and Conclusions:
26. After having heard learned counsel for the parties and having considered
the provisions of the Patents Act as also the case law upon which reliance
has been placed, I have no hesitation in holding that the present Petition
would have to be allowed. I say so for the following reasons, viz.
A. In the present case, the bibliographic particulars of the impugned
patent and the prior art document, i.e., D1, are not in dispute. D1
traces its priority date to 31st May 2010, being the date on which the
provisional specification was filed, whereas the impugned patent
traces its priority to 15th September 2010, which is after D1. Section
11(2)(a) of the Patents Act clearly provides that if a complete
specification is submitted based on a provisional specification, the
priority date for those claims will be the date the provisional
specification was filed. Thus, the priority date of D1 clearly preceded
that of the impugned patent. The impugned order infact reflects this
and was never disputed by Respondent No. 2. Thus, the legal
requirements under Section 25(2)(c), namely, the existence of an
Meera Jadhav
4-COMMP-46-2025
earlier Indian application, its publication, and its earlier priority date,
were prima facie satisfied.
B. Despite the above, the Controller has not undertaken any technical
analysis of the competing patents and instead merely recorded that
D1 has "not found an appropriate document within the meaning of
Section 25(2)(c)", without recording any reason as to why or on what
basis such a conclusion was reached. Thus, the impugned order is, on
the face of it, unreasoned, let alone bereft of cogent reasoning. Given
that the impugned order is appealable, the Petitioner's reliance upon
the decisions in M/s. Woolcombers of India Ltd. v. Woolcombers
Workers Union, S.N. Mukherjee v. Union of India, and Assistant
Commissioner Commercial Tax Department v. Shukla & Brothers
is entirely apposite. Thus, the conclusions of the Controller, bereft of
any reasoning, cannot be sustained.
C. Crucially, in the present case, though the Controller has
acknowledged the relevant dates of priority and publication and has
noted the existence of the rival claims, yet has inexplicably failed to
Meera Jadhav
4-COMMP-46-2025
explain why D1 does not qualify as an "appropriate disclosure". This
is not a case of inadequate reasoning, but it is a case of absence of
reasoning. The impugned order, therefore, reflects complete non-
application of mind on the part of the Controller to the statutory
requirements under Section 25(2)(c).The reliance placed by
Respondent No. 2 on the decisions in Zarif Ahmad v. Mohd. Farooq
and Maya Devi v. Raj Kumari Batra & Ors. is, in my view, entirely
misplaced and has no application to the facts of the present case. As
already noted above, the impugned order is entirely bereft of reasons,
and therefore the question of this Court assessing the correctness of
such reasoning does not arise. What the Controller is in effect seeking
is for this Court to undertake the exercise of examining the matter
afresh in the first instance. In my view, to countenance such a stand
would, in my view, amount to effectively permitting the Controller
to abdicate its statutory duties under the provisions of the Patents Act
by considering opposition proceedings and passing a reasoned order.
Meera Jadhav
4-COMMP-46-2025
27. Hence, for the aforesaid reasons, I pass the following Order:
i. The Impugned Order dated 7th July 2023 passed by Respondent No.
ii. The Respondent No. 2's Patent No. IN 283059 (i.e. Patent
Application No. 2553/MUM/2010) is remanded back for fresh
consideration before a different Controller who shall adjudicate
the application in accordance with law. Needless to state that all
the rights and contentions of the parties are kept open.
iii. There shall be no order as to costs.
[ARIF S. DOCTOR, J.]
Meera Jadhav
