[Cites 4, Cited by 0]
Calcutta High Court
Trutzchler Gmbh And Co Kg Limited vs The Controller General Of Patents on 12 December, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
2025:CHC-OS:255
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
Ordinary Original Civil Jurisdiction
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
IPDAID/39/2024
[OLD NO AID 21/2022]
TRUTZCHLER GMBH AND CO KG LIMITED
VS
THE CONTROLLER GENERAL OF PATENTS
DESIGN AND TRADE MARK CGPDTM AND ANR
For the appellant : Mr. Adarsh Ramanujan, Adv.
Ms. Yamini Mookherjee, Adv.
Ms. Kaushiki Roy, Adv.
Mrs. Garima Mehta, Adv.
Ms. Sonal Mishra, Adv.
Mr. Suryaneel Das, Adv.
For the Controller : Mr. Sunil Shinghania, Adv.
Mrs. Priti Jain, Adv.
Heard on : 12.12.2025
Judgment on : 12.12.2025
Ravi Krishan Kapur, J.:
1. This appeal is directed against an order dated 17 August 2021, rejecting
an application for patent no. 1250/KOL/2009, titled "APPARATUS IN A
SPINNING ROOM PREPARATION, GINNING OR LIKE INSTALLATION
FOR THE DETECTION AND SEPERATION OF FOREIGN MATTER IN OR
BETWEEN FIBRE MATERIAL ESPECIALLY COTTON". The sole ground
2025:CHC-OS:255
for rejection is the alleged lack of inventive steps under Section 2(i)(ja) of
the Patents Act, 1970.
2. Briefly, the invention relates to an apparatus in a spinning room
preparation, ginning or like installation for the detection and separation
of foreign matter in or between fibre material. On 13 November 2017, the
respondent issued the First Examination Report raising objections
regarding lack of inventive steps. Thereafter, on 11 May 2018, the
appellant filed its response to the FER along with its amended claims.
On 8 January 2021, a hearing notice was issued in which no objection
relating to lack of novelty or inventive steps were raised. The objections
raised were limited to clarity and conciseness of the claims. On 29
January 2021, a hearing was held and the appellant filed their Written
Notes of Submissions with the amended claims addressing the issues of
clarity and conciseness of the claims. On 5 March 2021, an extended
hearing notice was issued in which the Controller reintroduced the
objections under inventive steps and proceeded to pass the impugned
order rejecting the application.
2025:CHC-OS:255
3. It is submitted on behalf of the appellant that the impugned order has
been passed in violation of the principles of natural justice. The
approach of the Controller in passing the impugned order i.e. claims 1
and 2 are granted subject to amendment and that claim 3 can be
allowed while observing on the other hand that the mentioned lack of
inventive steps is irreconcilable and inconsistent to the prior notices
issued by the Controller.
4. On behalf of the appellant it is contented that, in the scheme of the Act,
once the application was amended, section 13(3) was automatically
triggered and the amended specification would have to be examined and
investigated in a like manner as the original specification. In any event,
the inventive step objection had been waived in the light of the hearing
notice. In such circumstances, introducing the objection of inventive
steps suo moto without granting an opportunity to the appellant is in
violation of the principles of natural justice and contrary to the scheme
of the Act. The extended hearing notice is clearly perverse and
irreconcilable to the earlier notices which had been issued by the
2025:CHC-OS:255
Controller. The invention claimed has been granted in five other
jurisdictions namely China, Switzerland, Italy, Brazil and UK after
having fulfilled the same criteria of novelty and inventive steps.
5. On behalf of the respondent Controller, it is submitted that the
impugned order is not liable to be interfered with on the basis of the
materials on records and in the light of the prior documents being D1
and D2, the invention was not inventive and has been rightly rejected.
6. The ground on which the impugned order has been passed i.e. inventive
steps was admittedly withdrawn and given a go-by in the prior hearing
notices. In such circumstances, the objection of inventive steps stood
waived in the hearing notice issued under section 14 of the Act.
Regardless of the procedure adopted in re-introducing the objection by
way of second hearing notice, once the application was amended the
amended specification has to be examined and investigated in the like
manner as the original specification (Guangdong Oppo Mobile
Telecommunications Corp., Ltd. vs. Controller of Patents and Desings 2023
SCC OnLine Cal 6650).
2025:CHC-OS:255
7. The applicant was entitled to know of the grounds and have an adequate
opportunity for dealing with the objection of inventive steps prior to the
passing of the impugned order. The procedure followed in passing the
impugned order is against the scheme of the Act and has admittedly not
been adhered to in the facts and circumstances of the case.
8. In view of the above, the impugned order has been passed in violation of
the principles of natural justice and is liable to be set aside.
IPDAID/39/2024 stands allowed. The matter is remanded back to the
Controller to hear the matter afresh in accordance with law after giving a
full and complete opportunity to the applicant.
9. It is made clear that nothing in the impugned order or in this order is
binding on the Controller insofar as the merits of this case are concerned
and the Controller is at liberty to conduct a de novo hearing of the entire
application in terms of the scheme of the Act.
(RAVI KRISHAN KAPUR, J.)
SK.
