IP Intelligence › Real Scenarios › The hearing with no fallback
Real-life scenario · fictionalised
The hearing with no fallback
After two rounds of written argument, a hearing is offered. The applicant's representative attends and argues, for twenty minutes, that the invention is commercially successful, that the same family was granted in two other countries, and that the cited document is from a different industry. No amendment is proposed. The application is refused.
What would have changed the outcome?
What a hearing is for
The Controller has already read the file and the written submissions. Repeating them uses the time and adds nothing.
What moves a hearing is a specific, technical point about the difference between the claim and the closest cited document, and a concrete amendment that the Controller can allow on the day. Commercial success and foreign grants are, at best, secondary - Indian subject-matter and inventive-step law differ, so a foreign grant proves little.
The missing fallback
Attending without a fallback claim set leaves the Controller with two options: allow the claim as it stands, or refuse. If the objection has any force at all, that is a bad position to create.
A marked-up amendment, narrowed to the smallest limitation that answers the objection and supported by the specification, converts the hearing from a yes-or-no into a negotiation about scope.
What should have happened
- Prepared a one-page claim chart comparing claim 1 with the closest cited document, feature by feature.
- Brought a marked-up fallback claim set that the specification supported.
- Led with the technical difference and its effect, not with commercial or foreign-grant arguments.
- Used the post-hearing written submissions to consolidate, not to introduce the argument for the first time.
Never walk into a hearing with only one acceptable outcome.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
- The Patents Rules, 2003, as amended (e-version updated to 15 March 2024) — Official IP India text
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Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.