In a recent patent case Advanced Electric Machines Group v. Controller of Patents (Calcutta High Court, April 2025), a patent rejection for an EV sub-assembly was set aside. One of the procedural issues noted: the Patent Office cited a Japanese prior art document (D3) at the hearing stage—without providing an English translation.
While the judgment addressed multiple deficiencies—including interpretation of figures, lack of inventive step reasoning—it also flagged the absence of an English translation of D3 as one of the procedural lapses contributing to the setting aside of the refusal order.
Indian patent rules place strict translation obligations on applicants. The Court referred to Rules 20(3)(b), 20(5), 20(6), 21(2), and 61(2)—and observed that the same standards ought to apply to the Patent Office as well.
For context, these rules impose strict translation obligations on applicants:
- A verified English translation must be submitted if a PCT application was not filed or published in English.
- Translations of amended claims may be required, or the amendments may be disregarded.
- Non-English priority documents must be translated when requested, or the priority claim may be lost.
- Documents in opposition proceedings must be accompanied by verified English translations.
These rules carry real consequences: loss of claim scope, loss of priority, or procedural exclusion. The Court noted that while such standards are strictly applied to applicants, procedural fairness must apply both ways.
In the present case, although the applicant engaged with D3 in post-hearing submissions, the rejection proceeded without any English translation being made available. The Court remanded the matter for reconsideration, citing this among other procedural deficiencies.
While the outcome establishes an important premise—that procedural fairness in patent examination should be a two-way street—it leaves open key questions:
Can applicants object to prior art solely on the ground that it is untranslated—or not a “verified translation”?
How should prosecution timelines account for delays when translations are not provided at the outset?
