Lack of reasons in IPO’s orders as a broader issue on one side, and add to it the context of atomic energy-related patents: you have a situation where refusal of patent applications becomes a hotly contested topic. This post is about a recent Bombay HC judgment (Huntington Alloys v UOI) concerning the refusal of a patent application under Section 4 of the Patents Act. Arising out of a writ petition, the judgment held the government respondents to task; the Court quashed the Deputy Controller’s order, which, as per it, was a non-speaking and unreasoned order. The patent application was directed to be reconsidered.
For some additional context, in December 2025, the country saw a shift in the nuclear energy governance framework with the passing of the Sustainable Harnessing and Advancement of Nuclear Energy for Transforming India (SHANTI) Act 2025. The legislation, which replaced the Atomic Energy Act 1962 (AEA) and the Civil Liability for Nuclear Damage Act 2010, also brought back nuclear/atomic energy patents back into the discussion circles. SHANTI Act transformed the absolute prohibition on grant of atomic energy patents, enshrined in Section 4 of the Patents Act, into a qualified permissibility where patents can be granted for peaceful uses of nuclear energy. How this change will play out, and its attendant concerns (including the wide discretionary powers with the Central Government), have been covered by me in another blog post. SHANTI Act has not been notified yet.
The segment of the ruling with respect to the Court exercising its writ jurisdiction and criticizing the lack of reasons is sound jurisprudence on paper. This also links to problems with the government’s [Department of Atomic Energy (DEA), more specifically] primacy over the patent grant process. Yet, the way the Court somehow brought Section 65 of the Patents Act, which pertains to revocation of atomic energy-related patents on the Central Government’s orders, into the mix in this judgment puts it into the zone of criticism. Before I go to that facet, I will summarize the facts and the rest of the reasoning.
Judgment in Brief: Long Wait Before the Decision
Huntington Alloys, a US-incorporated company, was the petitioner in this case. Huntington had filed a National Phase Patent application in 2008, which was published under Section 11-A of the Patents Act. It filed a request for examination of the Application on 09.03.2012. However, no steps were taken on it. On 18/11/2020 (after such a long delay), the Deputy Controller sent a communication to the DEA concerning this patent application with a prima facie view that the grant would be barred under Section 4 of the Patents Act. The application thus got referred to the DEA under Section 20 (6) of the AEA, whereby the Central Government, through the DEA, takes the final call on these applications. And that’s what the DEA did vide its order dated 06.04.2021.
The invention was titled ‘Ultra Supercritical Boiler Header Alloy and Method of Preparation’. It broadly entailed an alloy suitable for header pipes in boiler applications. The opposing contention was that the invention consisted of Niobium and Tantalum compositions and, therefore, related to atomic energy.
The Court commenced with an analysis of Section 4 of the Patents Act and Section 20 of AEA. In para 14, it noted that there is a clear “embargo in grant of patent in respect of an invention relating to atomic energy falling within sub-section (1) of Section 20 of the Act of 1962”. The Court also took note of the fact that the SHANTI Act has not been notified yet. In striking the fatal blow to the Controller’s order, the Court highlighted the absence of reasons in the order. The Petitioner had argued that the invention in no way results in the release of any atomic energy; this seems to have found favour with the Court. To support its findings, the Court referred to the Ceres Intellectual Property Company Limited ruling where a similar order had been set aside on the grounds of the absence of reasons.
Before I go to the Section 65-centric discussion of the order, a quick fun fact on the invention. Remember the reference to Niobium and Tantalum compositions in the impugned invention? When Section 20(1) of AEA prohibits atomic energy patents, its coverage is very wide and also includes inventions that relate to the “prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance”. I checked the Gazette Notification on the Schedule of Prescribed Substances. See the entry below:
Entry 0A306 Niobium and Tantalum, their metals, alloys, and minerals including columbite and tantalite.
I looked up the PCT claim sets for this invention on the WIPO website. The first claim does refer to Niobium and Tantalum.
Section 65: The Unwanted Guest
Section 65 of the Patents Act deals with the revocation of atomic energy patents that may have been granted. The Central Government can issue directions to the Controller to revoke such patents. Opportunity to be heard has to be given to the patentee. Under Section 65(2), the Controller can also allow the patentee to amend the complete specification as is necessary in his opinion; this would be an alternative to revoking the patent. Two things to be noted here: first, the provision deals with revocation of patents; it is part of Chapter XII (Surrender and Revocation of Patents) of the Act. Second, the possibility of amendment is a discretionary one.
The present case is not at all about an already-granted patent. That’s why it escapes me why the Court decided to go into this provision at all. The Court refers to the legislative trajectory of Section 65: before the 2005 amendments, Section 65(1) used the phrase “Where at any time after acceptance of a complete specification” instead of “Where at any time after grant of a patent”. Section 65(1) pre-2005 amendment covered both the patent applications as well as patents that were granted. The post-2005 avatar removed any references to patent applications in the provision.
If one reads the Patents Act along with the 2005 amendments, the reason for this distinction is quite obvious: earlier, the patent grant procedure involved the concepts of ‘acceptance of complete specification ’ and ‘sealing’ of patents. Sections 22-24 explained how this acceptance of a complete specification would work. The 2005 amendments removed these provisions, along with the concepts of ‘acceptance’ and ‘sealing’ of patents. Ramanujan notes that, instead, ‘acceptance’ was removed throughout the Patents Act, and there was only a ‘grant’ at the end of the examination phase. The Notes on Clauses confirm that the amendments to Section 65, among other provisions, were “consequential to the proposed removal of provisions relating to acceptance of patent application”.
The Court, however, explains the difference in versions somewhat strangely. It observed that when Section 65 was introduced originally, patent applications involving atomic energy were awaiting the decision. Therefore, the Controller was authorized to refuse to proceed with the application. Contrarily, by the year 2005, there were no applications pending, and thus Section 65 was restricted to revocation of patents. This is confusing phrasing to me. I believe the Court was trying to allude to the ‘acceptance’ and ‘sealing’ process. Maybe to justify from the Court’s perspective, it was trying to refute Huntington’s argument that Section 65 (post- 2005 amendment) didn’t allow for non-consideration of patent applications. This task, however, could have been accomplished very easily with a mere reference to Section 20 of AEA. Section 20(3) empowers the Central Government to intervene in pending applications as well. Section 65’s invocation, therefore, is completely unnecessary. And this is where the Court commits its error.
In para 13, the Court noted that to protect a patent application from non-consideration, the patentee/applicant can amend the specification to avoid it attracting the atomic energy bar. At the risk of sounding repetitive, Section 65, in its current form, only deals with the revocation of patents. Section 65(2) is about post-grant amendments to prevent revocation, and that too at the Controller’s discretion. In para 15, the Court again stated that “as indicated under sub-section (2) of Section 65, upon the reasons being communicated to the applicant, it is open for him to vary his invention, so as to avoid rejection of application”. An interpretation that runs against the very wording of the provision. Even in Raytheon Company, a 1974 Calcutta HC ruling, the Court negated the applicability of Section 65 to circumstances where a refusal of patent application is the question. The Calcutta HC had observed that Section 65 is contained in Chapter XII, which deals with surrender and revocation of patents.
Instead, the question needs its inquiry at the other site: Section 15 of the Patents Act. Under Section 15, the Controller can require amendments if the application doesn’t satisfy the statutory requirements. Whether it will actually happen in atomic energy patents is a tough question. The reason is that normally, if the Controller believes that the application may be in contravention of Section 4 of the Patents Act, it will refer it to the DEA for it to take the final call. As Section 20 of AEA makes it clear, the DEA’s directions will be final and outside the ambit of any appeal under the Patents Act [Section 20(6) AEA]. This is also why Section 65 of the Patents Act is outside the scope of appeals under Section 117A of the Patents Act. In this process, after the DEA has communicated its refusal, I do not see how the applicant can then ask for an amendment to its application. The only possibility, albeit an unlikely one, is that the Controller asks the applicant for amendments even before referring to the DEA. Interestingly, the new SHANTI Act says that if a question arises, the Controller ‘shall refer’ the application to the Central Government [Section 38(3)].
Conclusion:
Unreasoned/ inadequately reasoned orders coming from the IPO have been a much-discussed issue on the blog. On a principled level, I understand the BHC’s concern with the cryptic refusal in Huntington. Moreover, it is well within its writ jurisdiction powers to set aside such orders, because finality accorded to the Central Government’s decisions by Section 20 of AEA is limited to appeals under the Patents Act. But the way it utilized Section 65 in its judgment, along with a possible error in the articulation of the permissibility of pre-grant amendment in atomic energy patent applications, risks a muddying of the legal procedure. It remains to be seen as to how things proceed when AEA is officially replaced by the SHANTI Act.
Big thanks to Bharathwaj for the brainstorming and help with finding relevant documents for this post!