[Cites 9, Cited by 0]
Delhi High Court
Fertin Pharma A/S vs Assistant Controller Of Patents And ... on 18 February, 2026
Author: Tushar Rao Gedela
Bench: Tushar Rao Gedela
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 25/2023
FERTIN PHARMA A/S .....Appellant
Through: Mr. Kshitij Saxena, Mr. Saransh Vijay
Vargiye and Mr. Daksh Oberoi,
Advocates.
versus
ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
.....Respondent
Through: Mr. Arnav Kumar and Ms. Manya
Gupta, Advocates.
Date of Decision: 18th February, 2026
CORAM:
HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
JUDGEMENT
TUSHAR RAO GEDELA, J : (ORAL)
1. This is an appeal under Section 117A of the Patents Act, 1970 assailing
the impugned order dated 07.02.2023 passed by the Assistant Controller of
Patents and Designs under Section 15 of the Indian Patents Act, 1970,
rejecting the grant of patent in patent application no.202017042442.
2. Having heard the learned counsel for the parties and having perused the
impugned order, this Court is inclined to set aside the impugned order and
remit back for de novo consideration. The reason as to why this Court is
remanding the matter would be clear from a reading of the impugned order
itself. It would be appropriate and apposite to extract the said order:-
"3.0 OBJECTIONS
Invention u/s 2(1) (j)
1. (i) Subject matter claimed in claims 1-30 is not an
invention with in meaning of section 2 (1) (j) of Patents Act,
please refer to documents as cited in ISR.
Sufficiency of Disclosure u/s 10 (4)
1. Amended claim 19 claimed as the tablet is provided as a
three layer tablet. However there is no comparative example of
three layers in the complete specification, the examples
provided in the specification related to only two layer tablets.
Therefore the subject matter of amended claim 19 is inconsistent and
beyond the scope of claim 1 and it not supported by the description u/s
10 (4) of Indian Patents act, 1970.
4.0 ANALYSIS
The following documents are as cited In International Search Report,
D1 W02015/070875
D2 W003/059082
D4 W02017/059858
Document D1-D3 disclose tablets (chewing gums) comprising calcium
carbonate in an amount more than 30% by weight of the tablet and
organic water-Insoluble components In an amount of more than 20%
by weight of the tablet.
The release profile mentioned In claim 1 does not represent a
technical feature further limiting the scope of the claim, but It is
rather an effect of the composition,
The document D1-D3 also teaches multiplayer tablets and use of
elastomers and resins, optimizing the percentage of the resins In the
tablet Is routine experimentation for person skilled in the art,
therefore subject matter claimed in amended claim 1is not meeting
requirement of section 2 (1) (j) (a) of Patents Act.
5.0 CONCLUSION
Therefore, Subject matter of amended claim 1 is not meeting
requirement of section 2 (1) (j) (a) and, thus it is refused to
proceed."
3. It is important to note that the FER which was issued vide the
communication dated 28.02.2022, raised the objections on the following
grounds:
• Lack of inventive step under section 2 (1) (ja) of the Act.
• Lack of novelty under section 2 (1) (j) of the Act.
• Lack of sufficiency of disclosure under section 10(4) of the Act.
• Non-patentability under section 3(d), 3(e) and 3(i) of the Act.
• Definitiveness, other requirement and formal requirements.
4. Thereafter, the hearing notice which was issued vide dated 29.08.2022
while retrieving the objections of lack of novelty under section 2 (1) (j) and
lack of sufficiency of disclosure under section 10(4) of the Act, removed all
other objections.
5. Thereafter, the impugned order was passed on 07.02.2023 by the
learned Controller specified the objection in the hearing notice i.e., novelty
and lack sufficiency of disclosure.
6. It is apparent from the impugned order reproduced above, that the order
starts with the objection of lack of novelty, and lack sufficiency of disclosure.
Thereafter, the impugned order mentions how the cited prior art documents
D1 to D3 would render the invention of the subject application "obvious" to
person skilled in the art without discussion of the prior arts. The order merely
mentions the name of the cited prior arts and arrives at a conclusion without
reasons.
7. Therefore, this court is of the view that the impugned order has various
infirmities such as lack of clarity of objection based on which the order rejects
the subject application and lack of reasoning with respect to cited prior arts
D1 to D3. Even if this Court assumes that the impugned order addresses the
objection of lack of inventive step not lack of novelty as specified in the
hearing notice, still the order does not provide sufficient reasons.
8. The analysis in the impugned order appears to be cryptic for the reason
that it only refers to the four prior arts i.e. D1, D-2, D-3 and D-4 to conclude
that the amended claim no.1 does not meet the requirement of Section 2(i)(ja)
of the Act and thus was refused. It is pertinent to note that the references to
the documents D-1 to D-3 in the impugned order is only with respect to what
is contained therein, however the claims are not juxtaposed against such prior
arts documents D-1 to D-3 and elaborated as to how the claims does not fall
within Section 2(i)(ja) of the Act.
9. The Assistant Controller is required, rather mandated by the Act as a
quasi judicial authority to give reasons for such refusal. Apparently, there are
no reasons mentioned in the impugned order other than reference to the prior
art documents D-1 to D-3. This would not fulfill the mandate under Section
15 of the Act.
10. It is trite that reasons are the bedrock of all orders including those
passed by the quasi judicial authorities. The appellants before the Controller
are entitled to reasons as to why their claims have been rejected. This also
stems from the fact that parties are entitled to know the grounds of rejection
so as to make good its case for an appeal. In the absence of such grounds, the
aggrieved party would have no basis to formulate its ground at all. In that
view of the matter, this Court is of the considered opinion that the said order
needs to be set aside with a direction for remittance.
11. Accordingly, the impugned order is set aside with a direction that the
said patent application shall be considered de novo by an Assistant Collector
of Patents other than the Assistant Controller who had passed this order. The
aforesaid direction for a fresh consideration by another Assistant Controller is
not to be taken as a reflection of any nature against the said Assistant
Controller who had passed the present order.
12. Accordingly, the application is allowed.
13. The patent application no.202017042442 shall be considered de novo
after giving a notice of hearing to the appellant by the Controller. The said de
novo consideration be completed within next four months from the date of
receipt of this order.
14. The appeal disposed of in the above terms.
TUSHAR RAO GEDELA, J
FEBRUARY 18, 2026
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