Calcutta High Court
Quality Tools Srl (Sr. No. … vs The Controller General Of Patents And on 25 July, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD-11
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
Intellectual Property Rights Division
IPDPTA/93/2023
QUALITY TOOLS SRL (SR. NO. 34/2020/PT/KOL)
VS
THE CONTROLLER GENERAL OF PATENTS AND
DESIGNS AND ANR
Before:
The Hon'ble Justice RAVI KRISHAN KAPUR
Date: 25th July, 2025
Appearance:
Mr. Adarsh Ramanujan, Adv.
Ms. Yamini Mahawar, Adv.
Mr. Suryaneel Das, Adv.
Mr. Sonal Mishra, Adv.
Ms. Ruchira Manna, Adv.
Ms. Kaushiki Roy, Adv.
Mr. Anish Gupta, Adv.
..for the appellant.
Mr. Madhu Jana, Adv.
..for the Controller/ respondent
The Court: This is an appeal directed against an order dated 9 December,
2019 rejecting Patent Application bearing no. 3902/NP/2010 titled “PRESS AND
METHOD IN PARTICULAR FOR THE PRESSURE FORMING OF PAPER
CONTAINERSVEHICLE”. The above application was filed on 19 October, 2010.
Significantly, corresponding applications for the same invention have been granted
in 13 (thirteen) different jurisdictions after satisfying inter alia the requirements of
clarity and inventive steps. It is contended on behalf of the appellant that despite
all the necessary particulars being before the Controller, the sole ground for
rejecting the subject invention is that the invention lacked inventive steps.
It is contended on behalf of the appellant that the impugned order is bereft
of any reasoning. Out of the total 77 pages, the impugned order narrates the prior
art documents D1 and D3 in the first 38 pages. Thereafter, under the heading
called “Scientific And Technical Analysis”, the impugned order reproduces and
summarizes different extracts from D1 and D3, paraphases the argument of the
appellant and concludes that the subject invention is obvious to the person skilled
2
in the art by a combination of the alleged prior arts D1 and D3. The conclusion is
as follows:
“Considering documents D1: JP2004230873A and D3: US2005159284A1 in
combination, present application for patent lacks of in inventive step still stands as
the applicant fails to persuade the same. Features of current amended claims are
not inventive over cited documents as above and are not allowable u/s 2(I)(ja) of the
Act.”
In this background, it is contended on behalf of the appellant that, the
impugned order lacks any reasoning and the same is liable to be set aside.
In Toyo Engineering Corporation vs. Controller General of Patent,
AID/17/2022, Order dated 19.12.2022, it was held as follows:
“I find from the impugned order that the conclusion arrived at by the Controller does
not contain any reasons whatsoever. The impugned order takes into consideration
certain documents but does so in a cursory and casual manner.
Orders of such nature need to meet the twin tests of “why” and “what”. It is the “why”
which sustains the “what”. Reasons are the safeguard against the ipsi dixit of the
decision-making process. They discuss how the mind has been applied to the matter in
issue and convey the nexus between the matters which have been considered and the
conclusion based thereon. The justification and the reasonableness of a conclusion can
only depend on the reasons given in support thereof. The order impugned has no
element of “why” for the “what” therein to stand on (Uniworth Resorts Limited and
Ajay Prakash Lohia Versus Ashok Mittal & Ors. reported in (2008) 1 CalLT 1).”
On behalf of the Controller, it is fairly submitted that they are unable to
justify the impugned order.
A perusal of the impugned order would demonstrate that there has been no
application of mind whatsoever. It is well settled that orders of this nature must
satisfy the twin fold test of “why” and “what”. There is no reasoning in arriving at
the conclusion that there were no inventive steps in the subject application [UPSC
vs Bibhu Prasad Sarangi, (2021) 4 SCC 516].
In view of the above, the impugned order is set aside.
3
IPDPTA/93/2023 stands allowed.
The matter is remanded back to the Controller to have the subject
application heard afresh in accordance with law. This exercise is to be concluded
within the period of three months from the date of communication of this order.
In view of the pre-determined approach of the Controller, the matter shall be
heard by a different Hearing Officer.
(RAVI KRISHAN KAPUR, J.)
Arsad, AR(CR)
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