Explaining two recent judgements on amendments- Dong Yang PC Inc. v Controller of Patents and Designs (Delhi HC) and Srinivas Jegannathan v Controller of Patents (Madras HC), S. Sri Ganesh Prasad, argues how they point towards the need for the patent office to fulfil its quasi-judicial role in patent prosecution with clarity and evidence. Ganesh is a third-year B.A. LL.B. (Hons.) student at the West Bengal National University of Juridical Sciences (WBNUJS), Kolkata. He is interested in a wide range of private and commercial law subjects, including arbitration, intellectual property, and competition law. His previous post can be accessed here.
Reframing Procedural Fairness in Patent Amendments: A Comparative Look at Dong Yang and Srinivas Jegannathan’s Reversals
By S. Sri Ganesh Prasad
The evolving jurisprudence around patent prosecution in India, reveals a deeper tension between procedural discipline and substantive fairness. Two recent High Court decisions in Dong Yang PC Inc. v Controller of Patents and Designs (Delhi HC) and Srinivas Jegannathan v Controller of Patents (Madras HC), offer instructive perspectives on this issue. While both engage with the legal boundaries of patent amendments and inventive step, they differ in their emphasis: Dong Yang addresses whether a patent amendment can be denied solely for a disclosure omission, whereas Srinivas Jegannathan scrutinizes the evidentiary rigor behind a finding of obviousness. Together, the judgements point towards a growing judicial insistence that procedural norms must operate within the statutory framework, not override it and that quasi-judicial discretion of the patent office must be exercised with clarity and evidence.
The Dong Yang Dispute: A Question of Timing and Fairness
The patent application in Dong Yang concerned a mechanical system for a vertical rotary parking device. After responding to the First Examination Report (FER), the applicant was confronted with an additional prior art reference (D5) cited by the Patent Office. This prior art was an earlier patent held by the applicant but had not been mentioned in the original specification.
To address this, the applicant filed a Form-13 amendment incorporating D5 into the background section. No claims were altered. The amendment merely contextualised the invention in light of the newly cited prior art.
The Controller rejected both the amendment and the application. He reasoned that because D5 was the applicant`s own patent, it should have been disclosed upfront. Permitting its inclusion would later, in his view, subvert the duty of disclosure. Further, he held that the claimed difference over D5 was obvious and lacked inventive step, invoking “common general knowledge” without citing technical materials.
Statutory Limits and the Role of the Controller
The Delhi High Court reversed this decision, holding that the Controller’s interpretation of Section 59 of the Patents Act was impermissibly expansive. Section 59 permits amendments by way of disclaimer, correction, or explanation, provided they do not broaden claims or introduce new matter. The provision contains no requirement that the prior art being incorporated must have been disclosed earlier to be eligible for amendment.
The Court found that the amendment was explanatory in nature and met all the statutory conditions. The Controller`s refusal, based on a failure to disclose D5 at the time of filing, effectively introduced a non-existent condition into the statutory framework, which the Court held to be legally unsustainable.
This clarification is important. The decision does not diminish the quasi-judicial nature of the Controller`s role. It instead stresses that even quasi-judicial decisions must remain anchored to the statutory text. Discretion must be exercised within the law, not by importing punitive rationales from disclosure norms into the amendment process.
Separating Disclosure from Amendment
The Court made an important doctrinal distinction. Even if the applicant ought to have disclosed a known prior art reference earlier, the failure does not, in itself, render a later amendment incorporating that reference impermissible, particularly when the Patent Office has cited it during examination.
To collapse disclosure obligations into amendment eligibility would be to transform the amendment process into a tool for procedural sanction. But as the Court correctly noted, the purpose of amendments is not to penalise application for earlier omissions, but to allow for engagement with the evolving prosecution record.
This is not to say that disclosure obligations are toothless. Deliberate suppression or misrepresentation may lead to post-grant revocation under Section 64. However, those are separate enquiries. At the pre-grant stage, the amendment must be evaluated only against the express limits of Section 59.
Obviousness and the Use of “Common General Knowledge”
On the issue of inventive step, the Court also took exception to the reliance on “common general knowledge” without any evidentiary foundation. The only difference identified, reversing male and female coupling elements, was said to be obvious, but the rejection was not backed by manuals, publications or affidavits.
The Court held that obviousness must be proven, not presumed. If “common general knowledge” is to be invoked, it must be established through reliable, contemporaneous sources. Bare assertions do not meet the evidentiary threshold under the Act. This position aligns with the broader judicial consensus that the inventive step determination is fact-intensive and must reflect the perspective of a skilled person at the relevant time and not merely the subjective view of the examiner.
A Contrasting Lens: The Madras High Court’s Approach
While Dong Yang dealt with the legal basis for refusing an amendment, the Madras High Court in Srinivas Jegannathan addressed a different but related issue: the evidentiary sufficiency behind a finding of obviousness. There, the applicant had filed for a patent on a pharmaceutical composition involving ceftazidime, linezolid, and a beta-lactamase inhibitor. The claims were amended during prosecution and then rejected based on prior arts D1 to D6. The applicant expressed a willingness to revert to the original claims and argued that the cited prior arts, taken individually or together, did not disclose the precise combination.
The Court agreed. It found that while some prior art references disclosed individual components, none taught the specific combination claimed. More importantly, the Controller’s order merely reproduced extracts from the prior art and asserted that the invention was obvious. There was no analysis as to how a person skilled in the art (PSITA) would be motivated to arrive at the claimed composition. The Court held that this absence of reasoning made the rejection order untenable. It remanded the matter for fresh consideration on the basis of the original claims and noted that once the applicant reverted to those, objections to the amended claims and corresponding prior art lost relevance.
Shared Judicial Concern: Procedural Fairness Not Formalism
Despite their differences, both these judgements converge on a core principle that requires reasoning even when exercising procedural rigidity, albeit through different legal routes. Dong Yang curbs overreach by holding the line at statutory interpretation. Srinivas Jegannathan demands that even where the Controller acts within scope, the exercise of that power must be reasoned, transparent, and grounded in evidence. It emphasises that patent examination is not adversarial litigation, but a quasi-judicial process governed by statutory and evidentiary discipline.
Dong Yang rejects the idea that amendment rights can be conditioned on prior conduct. If a proposed amendment is substantively compliant, the applicant’s earlier failure to disclose cannot become a bar. Srinivas Jegannathan reinforces that technical conclusions, such as whether an invention is obvious must be explained.
It also throws cautions on both the applicants as well as the Patent Office in exercise of their duties implicitly; The Patent Office must take seriously the role of prosecution as a form of gatekeeping against meritless patents, by demonstrating clear reasons in their orders to not only do ‘justice’, but also to show that it is being done. Whereas, the applicants must operate with procedural discipline from within which would go a long way in contributing to the efficiency of the administrative system (that is significantly overwhelmed by the volume and complexity of applications on a daily basis).
Conclusion
At their core, Dong Yang and Srinivas Jegannathan reflect a judicial effort to recalibrate how authority is exercised within the patent system. Not by expanding rights or limiting power, but by demanding clarity in how each is understood and applied. As Indian patent law continues to evolve, what these cases underscore is the need not just for correct outcomes, but for transparent and traceable reasoning that sustains them.