Appeals from the Controller

Scope of the Appeal

1An appeal may lie to the High Court from an act or order of the Controller expressly mentioned in the Act (Patents Act 1970, s 117A(1)). The scope of appeal pertains to “any decision, order or direction” of the Controller under “section 15, section 16, section 17, section 18, section 19, section 20, sub-sections (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94” (Patents Act 1970, s 117A(2)).

2There is no clear indication under the Patents Act or the Patents Rules as to whether the High Court, to which appeals from the Controller now lie, can re-hear the matter in full on appeal. Earlier, before the abolition of the Intellectual Property Appellate Board (IPAB or Appellate Board) by the Tribunals Reforms Act, 2021, the Appellate Board was established as a special authority for entertaining appeals from the Controller. It does appear from the provisions of the Act, nature of function discharged by the High Court and the powers of the High Court that an appeal to the High Court is a full re-hearing of the case, and is not a limited appeal. However, exercising the writ jurisdiction of the High Courts over matters that lie beyond the scope of the appeal may bring into play the supervisory powers of the High Courts.

3In EMD Millipore v Assistant Controller of Patents and Designs (2025) (paras 11 and 13)the Delhi High Court, finding that “in the final impugned order, there is no finding in respect of novelty and inventive steps”, directed that a report be filed “in respect of novelty and inventive step of the subject patent as well, so that the matter can be comprehensively considered on the next date”, and, “considering that the interpretation of Section 3(i) of the Act would have a bearing on large number of patent applications”, appointed an Amicus Curiae.

4The appeal from a decision of a controller is an appeal on question of fact as well as law. The High Court is also vested with powers to hear applications for matters such as rectification of register and revocation of patents at the first instance. In fact, the grounds on which a grant of a patent may be opposed before the Controller are similar to the grounds on which a patent may be revoked before the High Court. Every appeal shall be in the prescribed manner and shall be accompanied by a copy of the decision, order or direction appealed against. The appeal shall be made within three months from the date of the decision, order or direction (Patents Act 1970, s 117A(4)).

Direction to grant vs Remand

5The High Court has the power to direct a grant where the facts of the case allow it to do so. In other cases, it may remand the matter back to the Controller for reconsideration. In Immunas Pharma v Assistant Controller of Patents and Designs (2024) (para 25) the Madras High Court directed the application to proceed for a grant, on the basis of the claims before it, in the light of its finding that the Section 3(c) rejection is untenable. In Genmab v Assistant Controller of Patents and Designs (2024) (para 31) the Madras High Court rejected the objections under section 3(c) and directed “the claimed invention proceed to grant on the basis of the claims submitted with the written submissions before the respondent”. In Pioneer Hi-Bred International v Controller of Patents (2026) (paras 13 and 18), by contrast, the Delhi High Court held that “this is a case of incomplete examination of the entire set of claims and therefore, the matter deserves to be remanded”, and that “the patent application requires complete examination and hence, fresh consideration”.

Appearance of Controller in legal proceedings

6Amendments to Chapter XIX on Appeals makes a distinction between legal proceedings at the first instance and appeals (Patents Act 1970, s 117E(1)). Both rectification of register and practice related issues which are brought up before the High Court will qualify as legal proceedings at the first instance. A practice-related matter could be brought before the High Court under its writ jurisdiction. All other matters where the High Court sits in appeal over an order of the Controller will fall under appeals. In any legal proceedings before the High Court where the relief sought includes alteration or rectification of the register or which raises a question relating to the practice of the patent office, the Controller has a right to appear and be heard (Patents Act 1970, s 117E(1)(a)). The Controller may also appear and be heard in any appeal from an order of the Controller on an application under two circumstances: (1) the application was not opposed and it was either refused by the Controller or was accepted by him subject to any conditions stipulated by him; or (2) the application has been opposed and the Controller considers it necessary in public interest to appear. The Controller can also be directed to appear in any case by the High Court (Patents Act 1970, s 117E(1)). Instead of appearing before the High Court, the Controller may also submit a statement in writing signed by him in lieu of appearance. The Controller may give particulars of the proceeding before him or the grounds of any decision given by him or of the practice of the Patent Office in like cases or of such other matter as may be relevant. The statements made by the Controller shall form a part of the evidence in the proceeding (Patents Act 1970, s 117E(2)).

Maintainability of the Letters Patent Appeal

7A Letters Patent Appeal (LPA) before the Delhi High Court refers to an intra-court appeal that allows a contesting party to challenge a judgment or an order passed by a Single Judge of the High Court before a larger bench of the same court. In Sulzer Mixpac v Assistant Controller of Patents and Designs (2026), the question of maintainability of a letters patent appeal was raised before the Division Bench of the Delhi High Court. The Court applying the ratio of Promoshirt v Armasuisse (2023) held that an LPA would lie against an order passed by the Assistant Controller of Patents and Designs under Section 117A (2) of the Act.

Amendment in Appeal

8In OpenTV v Controller of Patents and Designs (2023) the Delhi High Court recorded of Nestle that “It also observed that the appeal is a continuation of the proceedings before the original forum and thus, amendments are permissible at the appellate stage.” (para 52) It held that “irrespective of whether the amendment is directed by the Court or is at the instance of Patent Applicant, so long as the requirements as laid down under Section 59 of the Act are fulfilled such that the amended claims are within the scope of original claims, is not breached, the amendment is permissible” (para 53), and that “though there is no embargo on permitting a Patent Applicant to amend claims even at the appellate stage, the amendment sought in this particular case intends to widen the scope of the original claims as filed. It is due to this reason that the same cannot be allowed.” (para 60)