Albemarle Corporation Vs Controller of Patents

Case Title: Albemarle Corporation Vs Controller of Patents:Date of Order: July 07, 2025:Case Number: C.A. (COMM.IPD-PAT) 19/2022:Neutral Citation: 2025:DHC:5338:Court: High Court of Delhi at New Delhi:Judge: Hon’ble Ms. Justice Mini Pushkarna

In this patent appeal under Section 117A of the Patents Act, 1970, Albemarle Corporation, a U.S.-based chemical company, challenged the order dated May 12, 2021, by the Controller of Patents, which refused its Indian Patent Application No. 2897/DELNP/2012 titled “Solvent Systems Having No Flash Point and Methods Using Such Solvent Systems for Dissolving Rigid Polyurethane Foams.” The refusal was primarily based on lack of novelty, lack of inventive step, and non-fulfilment of enablement requirements under Sections 15 and 10(4) of the Patents Act, referencing prior art documents D1–D4.

Procedurally, Albemarle had filed the application in April 2012 and responded to the First Examination Report issued in October 2017. Several hearings and written submissions followed through 2020 and early 2021. After the refusal, the company appealed before the Delhi High Court and, during the pendency of the appeal, filed I.A. 35045/2024, seeking to introduce an auxiliary claim set limited solely to the process aspect of cleaning polyurethane foam.

The core dispute focused on whether such amended claims could be introduced at the appellate stage. The respondent-Controller opposed the application, arguing that amendments at this stage were impermissible. However, the Court observed that neither the Patents Act nor its procedural framework expressly bars such amendments during appeals. Referring to precedents including Societe Des Produits Nestle SA v. Controller of Patents, the Court held that amendments narrowing claim scope are permissible provided they fall within the original disclosure and satisfy Section 59 conditions.

After examining both the original and amended claims, the Court concluded that Albemarle had merely narrowed its claims without introducing new subject matter, thereby remaining consistent with the original specification. The Court also emphasized that amendments aimed at overcoming objections and facilitating grant of patent are permissible, especially when they do not expand the scope beyond what was initially disclosed.

Accordingly, the Court allowed I.A. 35045/2024, directed the auxiliary claim set to be taken on record, and revived the original patent application for fresh examination limited to the amended claims. The matter was remanded to the Patent Office with instructions to conclude the re-examination within six months. The appeal was disposed of in these terms, with no interference in the merits of the original refusal order since the challenge to it had not been pressed.