Judicial Stand on Non-Speaking Orders: Upholding Procedural Fairness in Patent Law

Introduction

In recent years, Indian Courts have shown greater vigilant in scrutinizing the decisions issued by the Indian Patent Office (IPO), particularly in cases where patent applications have been refused without adequate and proper reasoning. These judicial interventions have reaffirmed a key tenet of administrative and quasi-judicial functioning, an obligation of the IPO to issue speaking or reasoned orders.

A “Speaking order” is an order that clearly articulates the grounds for refusal, addresses the applicant’s submissions presented in view of the objections raised by the IPO, and demonstrates the Controller’s thoughtful consideration before reaching a conclusion. Courts have consistently set aside the “non-speaking orders” for lacking adequate reasoning or failing to consider the Applicant’s submissions, holding such orders to be in violation the principles of natural justice, as they deny the applicant a fair and transparent decision-making process. This judicial trend signifies the increasing emphasis on procedural fairness and the need for reasoned, transparent decisions from the IPO.

This article explores recent High Court judgements that reaffirm the importance of reasoned orders and explores their implications on both applicants and IPO practice.

Recent High Court Decisions

1.               Nissan Motor Co. Ltd. Vs. The Controller of Patents and Designs [IPDAID/27/2024, dated June 12, 2025]

In a recent matter, the Calcutta High Court set aside the rejection of a patent application filed by Nissan Motor Co. Ltd. for its “Vehicle Driving Support Device & Method.” The invention relates to a method which supports the driving of a driver by controlling a vehicle so that the vehicle moves  toward the centre of a lane when the vehicle reaches a predetermined lateral position in a lane width direction.

The Controller rejected the patent application under Section 15 of the Patent Act, 1970 (hereinafter “The Act”) for  non-compliance of Section 2(1)(j) and Section 2(1)(ja) of the Act. The order primarily relied on prior art documents (D1 and D2) but offered no substantive reasoning beyond a general statement that the claimed invention was obvious in view of their combined teachings.

On  perusal of the impugned order, the Court observed that that there are no findings arrived at in concluding that the subject application did not fall within the requirement of inventive steps under Section 2(1)(j) and 2(1)(ja) of the Act and the same has been passed in violation of the principles of natural justice. Reaffirming that “even quasi administrative authorities are bound to give reasons in their orders”, the Court noted:

“The order impugned has no element of “why” for the “what” therein to stand on. There has been no application of mind in the impugned judgment which can be ascertained from a reading of the same. ….. The impugned order is devoid of any reasoning as to why the subject invention is lacking in inventive steps. There is no discussion of the technical advancement of the claim subject matter. ….. The focus on the prior arts without any explanation or any justification vitiates the impugned order.”

The Court thus set aside the order in the absence of reasons and remanded the matter back to the Controller to decide the matter afresh in accordance with law after giving an opportunity of hearing to the appellant.

2.               Shindengen Electric Manufacturing Co. Ltd vs Assistant Controller of Patents and Designs and ors, [IPDPTA/14/2024, dated June 13, 2025]

In another matter, the Hon’ble Calcutta High Court set aside the rejection of a patent application filed by Shindengen Electric Manufacturing Co. Ltd., titled “A lamp lightning control circuit”. The invention relates to lamp lightning control circuits that separate alternating current outputs into positive and negative sides and supply power for battery charging and lamps and specifically to control circuits  which stabilize supply of power source of lamps. The patent application was rejected by the IPO on the ground that the invention constituted a mere aggregation of prior art D1 to D3 and therefore lacked inventive step in view of the cited prior art documents, as required under Section 2(i)(j) and 2(i)(ja) of the Act.

Upon review of the impugned order, the Court observed that the  order was a verbatim reproduction of the hearing notice, and failed to address the Applicant’s detailed submissions or technical arguments. The Court held that: “ The broad manner in which the impugned order has been passed reflects that though the Controller has said everything but in fact said nothing. There are no reasons in the impugned order. It is now well settled that reasons form a critical aspect of any order.”

This judgment also draws upon the Supreme Court’s decision in State Bank of India vs. Ajay Kumar Sood (2023) 7 SCC 282, which emphasized that a judgment must be a manifestation of reason. It has been held as; “The reasons provide the basis of the view which the decision maker has espoused, of the balances which have been drawn. That is why reasons are crucial to the legitimacy of a judge's work. They provide an insight into judicial analysis, explaining to the reader why what is written has been written. The reasons, as much as the final conclusion, are open to scrutiny. A judgment is written primarily for the parties in a forensic contest. The scrutiny is first and foremost by the person for whom the decision is meant-the conflicting parties before the court. At a secondary level, reasons furnish the basis for challenging a judicial outcome in a higher forum. The validity of the decision is tested by the underlying content and reasons. But there is more. Equally significant is the fact that a judgment speaks to the present and to the future. Judicial outcomes taken singularly or in combination have an impact upon human lives. Hence, a judgment is amenable to wider critique and scrutiny, going beyond the Immediate contest in a courtroom. …... Judgment writing is hence a critical instrument in fostering the rule of law and in curbing rule by the law.”

The Court, therefore, set aside the impugned order for failure to provide reasoning and remanded the matter for reconsideration

3.               Oramed Ltd. (OA/14/2020/PT/KOL) Vs The Controller General of Patents and Designs & Anr [(IPDPTA/8/2022) dated July 4, 2025]

In another recent significant decision, the Hon’ble Calcutta High Court set aside the refusal order passed by the IPO for various reasons. One of the key reasons was the lack of reasoning in the order.

The Court, while analysing the impugned order observed that order does not deal with the expert evidence or the scientific technical materials which had been furnished by the Appellant. Particularly, the Court observed that in determining inventive steps, the Controller has neither referred to nor dealt with the data with reference to the figures in the specification submitted along with the Written Submissions. On the contrary, the Controller proceeded to find components in the prior art ignoring the actual technical advancement achieved by the invention as a whole. The Court observed that there is also no reference to the expert affidavit submitted by the Appellant, though the same highlighted both inventive step and synergistic activity in dealing with Section 3(e) of the Act.

The Court allowed the appeal by setting aside the refusal order and remanded the matter to a different Controller for de novo consideration, with explicit directions to engage with all evidence and provide reasoned findings. This decision stresses that Patent refusal orders must contain clear, substantiated reasoning demonstrating that the Controller has applied complete due diligence  to the issues raised after full consideration of the applicant’s submissions and the applicable statutory provisions.

4.               Saint Gobain TM K K Vs Assistant Controller of Patents and Designs [C.A. (COMM.IPD-PAT) 16/2021] dated July 10, 2025]

Yet in another significant decision, the Hon’ble Delhi High Court set aside the refusal order passed by the Controller. The Appellant argued that the impugned order lacked reasoning and was essentially a verbatim copy of the earlier order passed by the European Patent Office (EPO) in a corresponding EP application.  The Appellant further submitted that, while the prior art documents considered by the EPO were entirely different from those cited by the Controller in the present matter, the corresponding application was eventually granted by the EPO, thereby demonstrating that the claims in question were indeed patentable.

Upon considering these submissions of the Appellant, the Court observed the significant similarities between the EPO’s order and the impugned order passed by the Controller, and held that the Controller's order has been passed without due consideration of the overall aspects involved in the present matter. Thus, the Court set aside the order and remanded the matter back to the Controller for de novo consideration.  The Court also directed that the application be disposed of through a reasoned and speaking order, taking into account all arguments advanced by the Appellant.

Conclusion

The above and many other recent judgments of the Hon’ble High Courts in India have reinforced that providing clear and cogent reasons in a refusal order is not merely a procedural formality but a legal necessity. A reasoned order serves as the foundation upon which an applicant can understand the basis of a decision, assess its merits, and, if needed, pursue an appeal before a higher forum. Moreover, reasoned orders allow the courts to evaluate whether the provisions of the Act have been properly applied, and access whether procedural fairness has been upheld. The Courts, through these decisions have repeatedly clarified that reasoning is the bridge between the facts, the law, and the conclusion, and without it, refusal orders cannot withstand judicial scrutiny.

Such decisions continue to shape a more transparent and accountable patent regime in India, rooted in the principles of natural justice.

Arpita Mukherjee

Managing Associate

arpita.mukherjee@iprattorneys.com