Bombay High Court quashes Atomic Energy Department's order denying patent to Huntington's boiler alloy

The Bombay High Court recently set aside the Union government’s refusal to grant patent to US-based Huntington Alloys Corporation for its boiler header alloy and method of preparation of the same [Huntington Alloys Corporation v. Union of India & Ors.]

In a judgment delivered on April 7, a division bench of Justices Bharati Dangre and Manjusha Deshpande pulled up the Department of Atomic Energy (DAE) for passing a cryptic, unreasoned order in which it had invoked the atomic energy bar under patent law.

Hence, it quashed the DAE’s April 2021 communication that had merely stated the invention "relates to Atomic Energy" and hence, patent cannot be granted.

The bench held that the order was without any reason and therefore, unsustainable. 

“The reasons of a decision are considered to be its ‘heartbeat’ replacing subjectivity with objectivity and ensuring that the authority passing the order has applied its mind to the facts placed before it. A non-speaking or unreasoned order hinders the appellate court’s ability to test the correctness”, the Court held. 

Huntington Alloys had filed a national phase patent application in 2008 for a high‑temperature nickel‑cobalt‑chromium alloy designed for long‑life service in ultra‑supercritical boiler header pipes.

After years of inaction, the Patent Office in November 2020 referred the case to the DAE under Section 20(6) of the Atomic Energy Act, 1962, and the application was rejected on atomic energy grounds without any disclosed reasoning. 

In its plea before the High Court, Huntington claimed that the alloy in no way amounted to release of atomic energy. 

The Court underscored that while the Central government has exclusive powers in the atomic energy domain and can direct refusal of patents for inventions relating to atomic energy, that power must be exercised in a manner consistent with procedural fairness. 

The Court said that in the absence of any reasons, the company had been denied the statutory option under the Patents Act to amend its specification to avoid rejection of application.

The Union government argued that DAE’s satisfaction is final and insulated from scrutiny.

The Court determined there was no difficulty in disclosing the reasons for refusing a patent application on grounds related to atomic energy.

“A process, which relates in release of atomic energy, is known to the experts with the Central Government, but when a person seek patent for his invention, according to us, he must be made aware of the reasons why his patent cannot be granted,” the Court said.

Hence, it sent Huntington’s 2010 application back to the DAE for fresh consideration expeditiously and directed that a reasoned order be passed. 

Advocates Rohan Kadam, Ishaan Paranjape, Jasmeet Kaur, Fatima Ali and Vinayika Shahi briefed by Anand and Naik Co. appeared for Huntingon Alloys. 

Additional Solicitor General Anil C Singh with advocates Yashodeep Deshmukh, Aditya Thakker, Apurva Gupte, Adarsh Vyas, Rutwik Rao and Anusha P Amin appeared for the Union of India. 

[Read Judgment]