The Controller's Powers on Examination

In one line

Between the examiner's report and the grant, the Controller may refuse the application, require it to be amended, deal with anticipation and with potential infringement of an earlier patent, substitute the applicant, and finally hold the applicant to a deadline.

In the wording a student can write in an exam: sections 15 to 21 of the Patents Act, 1970 confer on the Controller the powers to refuse or require amendment, to make orders respecting division and dating, to act where the invention is anticipated or would infringe another patent, to substitute applicants, and to treat an application as abandoned if it is not put in order within the prescribed period.

Section 15: refuse, or require amendment

The provision. Where the Controller is satisfied that the application or any specification or other document filed in pursuance of it does not comply with the requirements of the Act or of any rules made thereunder, the Controller may refuse the application, or may require the application, specification or other documents to be amended to his satisfaction before he proceeds with the application, and refuse the application on failure to do so.

This is the workhorse. Almost every Indian refusal is under section 15, because every substantive objection can be expressed as a failure to comply with a requirement of the Act: a claim lacking novelty does not satisfy section 2(1)(j), a claim to a business method does not satisfy section 3(k), and a specification that does not enable does not satisfy section 10(4).

And the discretion is real. The section gives the Controller a choice between refusing and requiring amendment, and an order that refuses without considering amendment, or without giving reasons, is vulnerable on appeal under section 117A. Chapter 1180 works the appeal through, and chapter 640 works section 80, which requires the Controller to hear a party before deciding against them.

Section 18: anticipation

Section 18(1): refusal. Where it appears to the Controller that the invention so far as claimed has been anticipated in the manner referred to in section 13(1)(a) or section 13(2), that is by an Indian patent specification published before the applicant's filing date or by any other document published anywhere, the Controller may refuse the application unless the applicant either shows that the priority date of the claim is not later than the date on which the relevant document was published, or amends the complete specification to the Controller's satisfaction.

Section 18(2): a reference instead of refusal, for prior claiming. If it appears that the invention is claimed in a claim of another complete specification referred to in section 13(1)(b), the Controller may direct that a reference to that other specification be inserted in the applicant's complete specification by way of notice to the public, unless within the prescribed time the applicant shows that the priority date of his claim is not later than the priority date of the claim in that other specification, or amends the specification.