The Delhi High Court, on February 24, 2025, passed an order in Arcturus Therapeutics v. Controller of Patents[1], remanding the case back to the patent office for reconsideration by the Assistant Controller of Patents on merit.

On February 15, 2019, a first examination report (FER) was issued by the Indian Patent Office, raising objections relating to lack of inventive step under Section 2(1)(ja) and non-patentability under Sections 3(d) and 3(h) of the Patents Act. The appellant, Arcturus Therapeutics Inc, filed its response to the said FER on August 13, 2019. A hearing notice was issued by the Patent Office on March 8, 2022, and the hearing took place on March 29, 2022. Subsequently, a second hearing took place on May 2, 2023, and the appellant filed a petition under Rule 138 of the Patents Amendment Act, 2005, on May 12, 2023, seeking a month’s extension for filing written submissions. The appellant was granted time till June 17, 2023, to file additional written submissions. However, they could only file the written submissions by July 25, 2023. By then, the Assistant Controller of Patents had already passed an order rejecting the patent application.

In its order, the Assistant Controller of Patents noted that the Applicant had appeared for the second hearing on May 2, 2023, and subsequently filed a petition u/r 138 on May 12, 2023, to file written submissions on/ before June 17, 2023. However, the Applicant failed to submit its written submissions, along with the data required on/ before June 17, 2023. Basis this, the Assistant Controller of Patents rejected the application and stated in his order of rejection that, “In view of the written submissions not filed, I am not satisfied that objections of the hearing notice dated April 27, 2023, still stand. Since objections are outstanding, and since no pre-grant representation u/s 25(1) is filed as per the records, proceeding to refuse the grant of patent on the basis of pending claims u/s 15 and 43 of the Act.”

Arcturus Therapeutics filed an appeal against the said rejection. The counsel for the appellant (Arcturus Therapeutics) contested that the order passed by the Assistant Controller does not deal with the merits of the case. The Assistant Controller had rejected the application merely on the ground that additional written submissions and data were not filed within the prescribed period. They further explained that the delay in filing the written submissions was on account of the lengthy process of conducting empirical studies to provide the comparative data, as directed by the Assistant Controller in the second hearing notice dated January 11, 2023.

The Court, in agreement with the counsel for the appellant, noted that a perusal of the order would show that the patent application was refused basis the appellant not having filed their additional written submissions on time. The order does not examine the merits of the matter.

The court held the view that rejection of the appellant’s patent application due to a mere procedural deficiency can have serious consequences on the appellant’s invention. The Court further held that the principles of natural justice would require that the patent application filed on behalf of the appellant is considered on merits. Patent rights represent valuable rights and significant legal protections, and rejection of the patent application can have substantial consequences for the Applicant. Even if the Appellant failed to file additional written submissions on time, the Assistant Controller should have passed a reasoned order, dealing with the merits of the case and taking into consideration the objections raised in the FER, the reply thereto, the earlier written submissions filed on behalf of the appellant on May 13, 2022, and the submissions made orally during the course of the two hearings.

Taking into consideration the peculiar facts of the present case and in the interest of justice, the Court remanded the matter back to the Assistant Controller of Patents so that the appellant’s patent application can be considered on merit, taking into consideration the material on record, including the additional written submissions filed by the appellant on July 25, 2023.  

*Authors were assisted by Aparajito Choudhury (Intern)

[1] Arcturus Therapeutics Inc v. Controller of Patents & Designs, 2025 SCC OnLine Del 1300