Introduction
The High Court of Delhi in Hanmi Pharm. Co. Ltd v. The Controller General of Patents and Designs reaffirmed that the Patent Office must examine every category of claims raised in a patent application before rejecting it.
The judgement delivered on 11 May 2026 dealt with refusal of a pharmaceutical patent application on grounds of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act, 1970.
The court found that although the controller discussed product claims, the process claims forming part of the same application were completely ignored.
The ruling highlights the importance of the following:
- Procedural fairness
- Reasoned decision-making
- Comprehensive examination in patent adjudication
Factual and Procedural Background
The appellant, Hanmi Pharm. Co. Ltd., had filed Indian Patent Application No. 6101/DELNP/2014 on 21 July 2014 as a National Phase Application arising from PCT International Application No. PCT/KR2012/011571 filed on 27 December 2012.
The application claimed priority from Korean Priority Application No. 10-2011-0146818 dated 30 December 2011.
The invention related to thieno[3,2-d]pyrimidine derivatives and their pharmaceutical applications.
First Examination Report and Objections
The First Examination Report dated 16 January 2018 raised objections relating to:
- Novelty
- Inventive step
- Non-patentability under Sections 3(d), 3(e), and 3(i) of the Patents Act
In response, the appellant filed amended claims on 28 June 2018.
Hearing and Revised Claims
Subsequently, a hearing notice dated 12 April 2021 maintained objections relating to the following:
- Novelty
- Inventive step
- Section 3(d)
After the hearing conducted on 13 May 2021, the appellant submitted written submissions along with a revised set of twenty-two claims on 24 June 2021.
On the same date, a divisional application bearing No. 202118028356 was also filed.
Rejection by Controller
The Controller of Patents and Designs ultimately rejected the application through an order dated 25 April 2022.
Aggrieved by this refusal, the appellant approached the Delhi High Court under Section 117A of the Patents Act, 1970 by filing C.A.(COMM.IPD-PAT) 464/2022.
Timeline of Events
| Date | Event |
|---|---|
| 27 December 2012 | PCT International Application filed |
| 30 December 2011 | Korean Priority Application filed |
| 21 July 2014 | Indian Patent Application No. 6101/DELNP/2014 filed |
| 16 January 2018 | First Examination Report issued |
| 28 June 2018 | Amended claims submitted |
| 12 April 2021 | Hearing notice issued |
| 13 May 2021 | Hearing conducted |
| 24 June 2021 | Written submissions and revised claims filed |
| 24 June 2021 | Divisional application No. 202118028356 filed |
| 25 April 2022 | Patent application rejected |
| 11 May 2026 | Delhi High Court delivered judgement. |
Dispute Before the Court
The principal dispute before the court was whether the patent controller had legally and properly examined the patent application before rejecting it.
The appellant argued that the Controller failed to consider Claims 14 to 22, which were process claims relating to the method of preparing the claimed compounds.
According to the appellant, the impugned order discussed only Claims 1 to 13 dealing with the compound itself and did not analyse the independent process claims at all.
Arguments by the Appellant
- The Controller examined only product claims
- Claims 14 to 22 were ignored completely
- The rejection order lacked proper reasoning
- The process claims required independent examination
Response by the Patent Office
The respondent patent office defended the rejection on the basis of:
- Lack of inventive step
- Section 3(d) objections
However, during the hearing before the High Court, the Court specifically questioned whether the process claims had been examined in the impugned order.
Reasoning and Analysis of the Court
The Court noted that the Controller had analysed only the product claims by comparing them with cited prior art documents D1 and D2. However, there was complete silence regarding claims 14 to 22, which specifically related to the process for preparing the claimed compound.
The Court observed that Claim 1 covered the compound described as a “thieno[3,2-d]pyrimidine derivative of formula (I)” or its pharmaceutically acceptable salts, whereas Claim 14 independently claimed a method of preparation involving three steps. The court emphasised that process claims and product claims are legally distinct categories of patent claims, and each requires separate examination on its own merits.
Distinction Between Product and Process Claims
| Claim Type | Description | Court’s Observation |
|---|---|---|
| Product Claims | Related to the compound itself | Examined by the Controller using prior art documents D1 and D2 |
| Process Claims | Related to the method of preparation | Claims 14 to 22 were not examined in the impugned order |
A significant aspect of the judgement was the court’s emphasis on reasoned adjudication. The Court held that when an applicant places multiple categories of claims before the Patent Office, the Controller is duty-bound to examine each category and provide reasons for acceptance or rejection. Failure to do so amounts to non-application of mind and renders the order unsustainable.
Importance of Reasoned Adjudication
- The Patent Office must examine every category of claim independently.
- Reasoned findings are mandatory for acceptance or rejection.
- Non-examination of material claims amounts to non-application of mind.
- Quasi-judicial authorities must provide comprehensive reasoning.
The Court also recorded that, pursuant to a judicial query raised on 23 April 2026, the learned Central Government Standing Counsel appearing for the respondent admitted during the hearing on 4 May 2026 that the process claims had not been dealt with in the impugned order. This admission became an important factor in the court’s reasoning.
Court Observations on Patent Adjudication
Although the judgement does not undertake a detailed substantive analysis of Section 3(d) or inventive step jurisprudence, it reinforces broader administrative law principles applicable to patent adjudication. The decision aligns with settled judicial principles that quasi-judicial authorities must provide reasoned findings on all material issues raised before them. The judgement reflects the growing trend in Indian intellectual property jurisprudence requiring higher standards of examination and transparency from the Patent Office.
The Court did not finally decide the patentability of the invention itself. Instead, it focused on procedural legality and fairness in examination. This approach is important because appellate courts in patent matters frequently avoid substituting technical examination with judicial opinion unless absolutely necessary.
Final Decision of the Court
The Delhi High Court set aside the impugned order dated 25 April 2022 passed by the Controller of Patents and Designs. The matter was remanded back to the Patent Office for fresh consideration on merits after granting the appellant a fresh hearing opportunity.
The court directed the controller to reconsider the matter independently and in accordance with law without being influenced by observations contained in the judgement. The Court further directed that the reconsideration be completed within six months from the date of the judgement. Additionally, the Court directed that a copy of the order be placed before the Controller General of Patents, Designs and Trademarks for necessary administrative action.
Key Directions Issued by the Court
- Impugned order dated 25 April 2022 was set aside.
- Matter remanded for fresh consideration on merits.
- Fresh hearing opportunity to be granted to the appellant.
- Controller to decide the matter independently and in accordance with law.
- Reconsideration to be completed within six months.
- Order to be placed before the Controller General for administrative action.
Point of Law Settled in the Case
The judgement establishes that while examining a patent application, the Patent Office must independently consider and adjudicate all categories of claims, including product claims and process claims. Failure to examine material claims raised in the application constitutes non-application of mind and renders the rejection order legally unsustainable.
The ruling reinforces the requirement of reasoned and comprehensive decision-making by quasi-judicial authorities under the Patents Act, 1970.
Case Details
| Case Title | Hanmi Pharm. Co. Ltd Vs The Controller General of Patents and Designs |
|---|---|
| Date of Judgment | 11 May 2026 |
| Case Number | C.A. (COMM.IPD-PAT) 464/2022 |
| Neutral Citation | 2026:DHC:4122 |
| Court | High Court of Delhi |
| Honourable Judge | Justice Tushar Rao Gedela |
Disclaimer: Readers are advised not to treat this as substitute for legal advice, as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
