Coral Drugs Private Limited Vs The Assistant Controller of Patents

Coral Drugs Private Limited filed patent application no. 201717022856 for a process of preparing 16,17-acetals of pregnane derivatives. After pre-grant opposition by respondent no.2 and examination, the Assistant Controller rejected the application on 23.03.2023 solely on the ground of lack of inventive step under Section 2(1)(ja) read with Section 25(1)(b) of the Patents Act, 1970. 

Aggrieved, the appellant filed the present appeal. During hearing, the appellant agreed to amend claims by deleting claims 2 and 3 (which had broadened the scope of independent claim 1). The amended claims (Annexure-A) were placed on record, and both respondents (Patent Office and opponent) had no objection to their acceptance. 

The Court held that deletion of claims 2 & 3 merely narrows the scope without introducing new matter or contravening Section 59, relying on the principle laid down in Fresenius Medical Care case, and remanded the matter for de novo consideration by a different Controller on the amended claims.

Crisp bullet points of law settled in the case:

Deletion of dependent claims that broaden the scope of the independent claim, resulting in narrowing of the overall claim scope, does not contravene Section 59 of the Patents Act, 1970 and is permissible.  

  (Ref: Paras 8, 11, 12, 14)

Proposed auxiliary/amended claims that are in the nature of narrowing/disclaimer, do not broaden the scope of earlier filed claims, and whose subject matter is disclosed in the specification, comply with Sections 58(1) and 59 of the Patents Act, 1970.  (Ref: Paras 13–14; )

Case Details:Coral Drugs Private Limited Vs The Assistant Controller of Patents:29.01.2026: C.A.(COMM.IPD-PAT) 20/2023: : Hon’ble Mr. 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

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