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Introduction
Can a patent be rejected simply because its end goal is similar to existing technology? Is it enough for a Patent Controller to state that an invention is “obvious” without providing a technical roadmap to prove it? These were the central questions addressed by the Division Bench of the Delhi High Court in the landmark case of Tapas Chatterjee v. Assistant Controller of Patents and Designs & Anr. (2025)1. In a decisive move to safeguard the rights of innovators, the Court quashed the rejection of a patent application for a “Zero Liquid Discharge” (ZLD) system, setting a high bar for the standard of scrutiny required in pre-grant opposition proceedings. The ruling emphasizes that the Patent Office must move beyond “mechanical” rejections and provide deeply reasoned, “speaking orders” that respect the technical nuances of an invention.
The dispute involved a process designed to recover valuable materials like potassium sulphate and activated carbon from industrial “spent wash”, a notoriously difficult-to-treat byproduct of distilleries. While the Council of Scientific and Industrial Research (CSIR) opposed the patent by citing prior arts D1 and D2, the Division Bench identified a critical flaw in the lower authorities’ logic. The Assistant Controller (AC) had admitted the invention was “novel” (unique) but then immediately labeled it “obvious” (lacking an inventive step). The Court held that this was a legal paradox; if an invention is recognised as novel, the Controller must explain exactly how a person skilled in the art would have found the specific new features predictable. By failing to do so, the AC had replaced scientific inquiry with mere assertion.
A major highlight of the judgment was the Court’s insistence on the “Five-Step Test” for obviousness, famously established in F. Hoffmann-La Roche Ltd v. Cipla Ltd. (2016)2. The Division Bench noted that the Single Judge had essentially bypassed the first three steps of this test such as identifying the “Person Skilled in the Art” (PSITA) and the specific “inventive concept” and jumped straight to the conclusion. The DB clarified that similarity in the final objective of two technologies does not automatically mean the processes used to achieve them are the same. This distinction is vital for “waste-to-wealth” innovations where the novelty often lies in the efficiency or specific chemicals recovered, rather than the general idea of recycling.
The Court also corrected a significant misinterpretation of Section 3(d) of the Patents Act. This section is often used to prevent “evergreening” by rejecting the mere discovery of a new form of a known substance or a known process. However, the DB noted that Chatterjee’s process produced magnesium sulphate and activated carbon outputs that were not achieved by the cited prior arts. Because the invention resulted in distinct products that the previous technologies could not deliver, the objection under Section 3(d) was deemed factually and legally incorrect. This aligns with the precedent in Novartis AG v. Union of India (2013)3, which mandates that any scrutiny under Section 3 must be grounded in the actual technical efficacy or unique output of the claim.
By remanding the matter for a limited reconsideration, the Delhi High Court has reinforced a culture of accountability within the Patent Office. This judgment mirrors the principles laid down in Agriboard International LLC v. Deputy Controller of Patents (2022)4, which established that Patent Controllers must act as quasi-judicial officers, providing clear reasons for their decisions. For the legal and scientific community, this case serves as a reminder that the “inventive step” is a bridge of logic that must be built with technical evidence, not just administrative intuition. It ensures that the Indian patent regime remains a robust platform for genuine technological advancement, protecting the “how” of an invention just as much as the “what.”
Conclusion
The Tapas Chatterjee ruling marks a pivotal shift toward transparency and technical rigor in Indian patent law. By demanding that the Patent Office provide “speaking orders” and follow established judicial tests, the Court has ensured that innovation is not stifled by bureaucratic shortcuts. The decision ultimately affirms that while the bar for patentability is high, it must be crossed through structured analysis and scientific proof, ensuring that true technical progress receives the protection it deserves.
Citations
Expositor(s): Adv. Archana Shukla
