The Delhi High Court once again remanded a patent application back to the Patent Office after finding infirmities in the refusal order. The application was refused on two grounds, namely, that the divisional application was not allowable under Section 16 of the Patents Act, 1970, as the same claims had already been granted in the parent application, and that the claimed invention lacked inventive step. In AbbVie Ireland Unlimited Company vs Deputy Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 65/2024, decided on April 29, 2026], the divisional application filed by AbbVie Ireland Unlimited Company, in response to a unity of invention objection raised by the Patent Office, was refused by the Controller.
The claimed invention in the divisional application relates to a process for preparing an intermediate compound of formula (C), used in the preparation of compound of formula (A1). The Court found that the respondent Controller had himself raised an objection relating to the plurality of inventions in the parent application, which was later granted. The appellant contended that the instant divisional application was filed in response to this objection. The Court held that where a divisional application is filed pursuant to an objection raised by the Patent Office itself, it would be impermissible for the Controller to subsequently reject the application on the ground that the divisional claims were already covered by the parent application.
The Court referred to several prior IPAB decisions wherein it was held that once an applicant files a divisional application owing to an objection raised by the Patent Office, the applicant cannot be denied the right to file such a divisional application and be left in a lurch. The Court also emphasised the serious consequences of refusing a patent application, observing that refusal not only takes away the hard work, labour and skill invested by the applicant over the years, but may also result in an important invention being lost in the process, which would be detrimental to public interest. Additionally, the Court found that the patent application had been refused on the ground of lack of inventive step without proper analysis of the prior art and without taking into consideration the differences pointed out by the appellant.
The Court observed that determination of inventive step requires thorough and independent reasoning, rather than a casual analysis of prior art. The respondent Controller is expected to discuss and analyse all points raised in response to the objections and then pass a reasoned order while refusing a patent application. The Court noted that reasons are the heart and soul of any appealable order.
Appellant’s Case
The appellant submitted that, having raised an objection of unity of invention, the respondent Controller could not deny the appellant the right to file a divisional application for the subject matter. The appellant relied on the orders passed by the Intellectual Property Appellate Board in Milliken & Company vs Union of India [2016 SCC OnLine IPAB 7], Syntonix Pharmaceuticals, Inc. vs The Controller of Patents & Designs [2014 SCC OnLine IPAB 28] and National Institute of Immunology vs The Assistant Controller of Patents & Designs [2015 SCC OnLine IPAB 80], wherein it was held that once an applicant files a divisional application owing to an objection raised by the Patent Office, the applicant cannot be denied the right to file a divisional application and be left in a lurch. The appellant argued that the respondent Controller’s conclusion on non-maintainability of the divisional application was unsustainable, as the divisional application was filed in response to the unity of invention objection raised by the respondent Controller.
The appellant submitted that, despite the written submissions clearly bringing out the dissimilarities and differences between the prior art and the claimed invention, the respondent Controller held that the claimed invention lacked inventive step. The appellant argued that the respondent Controller had not provided any analysis of the alleged similarities, nor was there any discussion on the dissimilarities or differences clearly pointed out by the appellant.
The appellant further argued that the respondent Controller failed to provide any substantive reasoning explaining how the cited prior art documents rendered the claimed invention obvious. It was contended that the respondent Controller had merely reproduced portions from the prior art documents and, without undertaking any analysis, concluded that the claimed invention lacked inventive step.
Respondent Controller’s Reply
The respondent Controller maintained that the subject matter of Claims 1 to 6 of the instant divisional application was not allowable under Section 16 of the Patents Act, 1970, as these very claims stood granted in the parent application as Claims 14 to 18. The respondent argued that the application had not been refused on maintainability and that the divisional application was refused on merits alone. It was submitted that the claims in the divisional application were for an invention which was not distinct from the parent application. The respondent further maintained that the claimed invention lacked inventive step in view of the disclosures in prior arts D1 to D4.
Court’s Analysis and Findings
On Maintainability of Divisional Application
The Court noted that the respondent Controller had refused the divisional application both on maintainability and for lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. On the maintainability of the divisional application, the Court found that the respondent Controller had raised a unity of invention objection in the First Examination Report and that the appellant had filed the instant divisional application in response to this objection. The Court held that the divisional application was maintainable, as it had been filed to meet the objection raised by the respondent Controller.
The Court referred to the IPAB rulings in Milliken, Syntonix Pharmaceuticals and National Institute of Immunology, where the legal position relating to divisional applications filed in response to objections raised by the Patent Office was considered. In these cases, it was held that once an applicant files a divisional application owing to an objection raised by the Patent Office, the applicant cannot be denied the right to file such an application and be left in a lurch. The Court therefore held that the divisional application in the present case was maintainable.
On Inventive Step Determination and Reasoning
The Court observed that the respondent Controller’s finding that “the subject matter of the divisional application lacks inventive step under Section 2(1)(ja) of the Patents Act, 1970, as revised Claims 1 to 6 are disclosed in all four cited prior documents D1 to D4, either alone or in combination, and the cited prior arts make the claimed invention obvious to a person skilled in the art” was not supported by proper analysis. The Court found that there was no discussion on the dissimilarities or differences between the prior art and the claimed invention in the impugned order. There was also no analysis of the alleged similarities, nor any discussion on the dissimilarities or differences pointed out by the appellant.
The Court found from the documents on record that the appellant had elaborately brought forth what it perceived to be the differences and dissimilarities between the claimed invention and the cited prior arts. The Court noted that, to deal with the objection of lack of inventive step, the respondent had prepared comparative tables between the present invention and the prior arts, separately referring to their objective, structure, reaction scheme, reactants and product yield. However, the respondent merely concluded under each table that the prior art disclosed the claimed invention, without analysing the alleged similarities or discussing the dissimilarities and differences pointed out by the appellant. The Court categorically stated that the respondent Controller was expected to note, discuss and analyse all points raised in response to the objections and then pass a reasoned order.
Decision of the Court
The Court allowed the appeal and set aside the impugned order. The Court directed the Respondent to consider the divisional application afresh after considering the submissions of the appellant on the objection of lack of inventive step.
Concluding Remarks
This case once again highlights that a lack of analysis on the part of the Controller can make a refusal order vulnerable to appeal. The Court pointed out that it has been consistently held in earlier orders that reasons form the heart and soul of an order. A reasoned order not only enables the party to know what factors were weighed by the concerned authority in taking a decision against it but also assists the Court in examining the legality of the order under challenge.
In the present case, the divisional application was filed in response to the objection raised by the respondent Controller. Citing earlier IPAB orders, the Court reiterated that once the divisional application was filed at the instance of the Patent Office, it was not open to the respondent to reject the same on the ground that the claims under the divisional application stood granted in the parent application. The Court also observed that refusing a patent application is a serious matter, as it not only takes away the hard work, labour and skill invested by the applicant over the years but may also result in an important invention being lost in the process, which would be detrimental to public interest. It is therefore expected that Controllers note, discuss and analyse all points raised in response to objections and pass reasoned orders while refusing patent applications.
Author: DPS Parmar