A patent application must be examined with reference to the complete set of claims presented by the applicant. This requirement assumes particular importance where an application covers more than one category of claim, such as claims directed to a product and separate claims directed to the process for preparing that product. Even where objections are found against one category, the Patent Office must consider the remaining claims independently and record its findings before refusing the application. This issue arose before the Delhi High Court in the appeal Hanmi Pharm. Co. Ltd. vs The Controller General of Patents and Designs [C.A.(COMM.IPD-PAT) 464/2022], where the Controller’s order was challenged for failing to consider the process claims forming part of the patent application.
Case of the Appellant
Hanmi Pharm. Co. Ltd. filed an application for a patent relating to a pharmaceutical compound and its manufacturing process. After examination, the First Examination Report was communicated to the applicant, wherein it was stated that the claimed invention was not patentable, inter alia, on the grounds that the thieno[3,2-d]pyrimidine derivative compound and its pharmaceutically acceptable salts lacked novelty and inventive step and attracted the objections under Sections 3(d), 3(e) and 3(i) of the Patents Act, 1970.
Hanmi submitted its response on June 28, 2018, contesting the objections and filing an amended set of 23 claims. Claims 1 to 13 were product claims, while Claims 14 to 23 were process claims. After granting an opportunity of hearing, the Controller issued an order refusing the grant of patent. Claims 1 to 13 were considered vis-à-vis the cited prior art documents, D1 and D2, and the Controller concluded that the claimed invention was not patentable on account of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act, 1970. Aggrieved by the refusal order, Hanmi filed an appeal before the Delhi High Court.
The appellant submitted that their patent application contained both product and process claims. However, the Controller had failed to assess the process claims and had confined the refusal order entirely to product Claims 1 to 13. The appellant argued that the impugned order did not refer to the process claims at all and that the Patent Office had, therefore, failed to examine a material part of the claimed invention.
Court’s Analysis and Findings
The Court examined the impugned order and found that the Controller had not dealt with the process claims. The Court noted that Claim 1 of the subject application claimed a compound, namely, a “thieno[3,2-d]pyrimidine derivative of formula (I)” or a pharmaceutically acceptable salt thereof. Claim 14, on the other hand, claimed a method of preparing the thieno[3,2-d]pyrimidine compound of Formula (I), or a pharmaceutically acceptable salt thereof, as claimed in Claim 1. The method claimed under Claim 14 comprised three steps.
The Court observed that, despite the application containing both product and process claims, the impugned order had dealt only with the product claims and had omitted any consideration of the process claims. When the Court enquired whether the process claims had been examined, the learned Central Government Standing Counsel admitted that they had not been dealt with in the impugned order.
In view of this omission, the Court held that the refusal order could not be sustained. It observed:
“In such circumstances, it would be difficult to uphold the impugned order as it was incumbent upon the learned Controller to consider the Process Claims as well.”
Decision of the Court
Allowing the appeal, the Court set aside the impugned order dated April 25, 2022, passed by the Controller, holding that it could not be sustained. The matter was remanded to the Patent Office for fresh consideration. The Court further directed the Controller to grant a fresh opportunity of hearing to the appellant before deciding the patent application afresh.
Concluding Remarks
The examination of a patent application must address all material aspects of the claimed subject matter. Where an application contains both product and process claims, the Controller is required to examine each category of claims before arriving at a decision on grant or refusal. A rejection founded on the examination of only one part of the claim set cannot constitute a complete consideration of the application.
In the present case, the Controller failed to examine the process claims and confined the refusal order to the product claims. This omission was also acknowledged before the Court by the counsel appearing for the respondent. The Court, therefore, set aside the refusal order, holding that the Controller was required to consider the process claims as well.
The decision serves as an important reminder that a refusal order must record findings on each material category of claims forming part of a patent application. Since every refusal order is open to appellate scrutiny, the failure to deal with a distinct set of claims can result in the order being set aside and the matter being remanded for fresh consideration.
Author – DPS Parmar (Special Counsel)