Jfe Steel Corporation v. The Controller Of Patents And Designs

Digitally signed by MEERA MAHESH JADHAV Date:

2026.02.09 14:47:47 +0530 1/3 MEERA MAHESH JADHAV

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMMERCIAL MISCELLANEOUS PETITION NO.52 OF 2025 JFC Steel Corporation

...Petitioner

Vs.

The Controller of Patents & Designs

...Respondent

----- Mr. Gopal Trivedi a/w Mr. Chinmay M Page, Mr. Ashitosh Pawar for Petitioner. Ms Leena Patil for Respondent.

----- CORAM :

ARIF S. DOCTOR, J.

rd FEBRUARY 2026 DATE :

P.C.

1.

Heard Learned Counsel.

2.

The Petition impugns an Order dated 11 th January 2023 by which Respondent No. 1 has refused the Patent Application No. 1155/MUMNP/2015 u/s. 15 of the Patents Act, 1970.

3.

The principal contention of Learned Counsel for the Petitioner is that the Controller has rejected the Petitioner's patent application solely on the ground of non-compliance with Section 10(4) of the Patents Act, 1970, without examining the application on the merits of novelty or inventive step. He submits that the Impugned Order has absolutely no finding that the Petitioner's invention lacks either novelty or inventive step. He thus submitted that in terms of the settled

2/3 law, the rejection on the sole ground of non-compliance of Section 10(4) of the Patents Act, 1970, is clearly bad in law.

4.

Learned counsel placed reliance on the decisions of this Court in Hemant 1 and Karamchand Rohera v. Controller General of Patents & Designs & Anr. 2 in support of the Qualyst Transporter Solutions LLC v. The Assistant Controller aforesaid submission that rejection of a patent application solely on the ground of Section 10(4) is unsustainable in law.

5.

Having gone through the Impugned Order, I find merit in the aforesaid submission. A plain reading of the order makes it clear that the rejection is founded entirely on an alleged failure to meet the requirement of sufficiency of disclosure under Section 10 of the Patents Act, 1970. The Order does not contain any independent analysis or reasoning on the substantive statutory requirements of patentability, namely novelty and inventive step. Thus, in the absence of any findings on the aspect of lack of novelty or inventive step, the Impugned Order would have to be set aside.

6.

Also learned counsel for the Petitioner has rightly pointed out that the Impugned Order does not take into account the fact that patents in respect of the same invention have been granted in several foreign jurisdictions, including the United States, Europe, China and Japan. While the grant of a patent in other jurisdictions is not determinative of patentability under Indian law, it is 1 [Bombay High Court] Order dated 15th October 2025 in Commercial Miscellaneous Petition No. 61 of 2025 2 [Bombay High Court] Order dated 17th November 2025 in Commercial Miscellaneous Petition No. 11 OF 2022

3/3 nevertheless a relevant consideration which cannot be brushed aside, particularly when the rejection is founded solely on alleged insufficiency of disclosure. The requirement of sufficiency of disclosure is a fundamental prerequisite in all these jurisdictions as well, and the absence of any consideration of this aspect further underscores the inadequacy of the reasoning in the Impugned Order.

7.

In these circumstances, the Impugned Order cannot be sustained. The same is accordingly set aside. The matter is remanded for fresh consideration by a different Controller, who shall examine the application afresh in accordance with law, including all statutory requirements, and shall pass a reasoned order. The fresh decision shall, as far as practicable, be taken within a period of four weeks from today, subject to any administrative exigencies. 8.

The Commercial Miscellaneous Petition is accordingly disposed of. No order as to costs.

[ARIF S. DOCTOR, J.]