In Hanmi Pharm. Co. Ltd. v. The Controller General of Patents and Designs, decided on 11 May 2026 by the in Case No. C.A.(COMM.IPD-PAT) 464/2022, Justice set aside the Patent Office order refusing Patent Application No. 6101/DELNP/2014 relating to thieno[3,2-d]pyrimidine derivatives. The application had been rejected 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 observed that while the Controller analysed product claims with reference to cited prior art documents, the process claims contained in Claims 14 to 22 were completely ignored in the impugned order. The Court held that failure to consider the process claims rendered the order unsustainable in law. Accordingly, the impugned order dated 25.04.2022 was set aside and the matter was remanded back to the Patent Office for fresh consideration after granting a fresh hearing opportunity to the appellant. The Court further directed that the matter be decided afresh within six months, uninfluenced by any observations made in the judgment.
Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Detailed Analytical Article
Introduction
In an important decision concerning patent examination standards in India, 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 judgment delivered on 11 May 2026 by Justice Tushar Rao Gedela 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 procedural fairness, reasoned decision-making, and 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.
The First Examination Report dated 16 January 2018 raised objections relating to novelty, inventive step, and 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. Subsequently, a hearing notice dated 12 April 2021 maintained objections relating to novelty, inventive step, and 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.
The Controller of Patents and Designs ultimately rejected the application through 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.
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.
The respondent Patent Office defended the rejection on the basis of lack of inventive step and 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 Judge
Justice Tushar Rao Gedela carefully examined the structure of the impugned order and the claims forming part of the patent application. 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.
A significant aspect of the judgment 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.
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 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.
Although the judgment 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 judgment 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 judgment. The Court further directed that the reconsideration be completed within six months from the date of the judgment. 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.
Point of Law Settled in the Case
The judgment 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:____ (Neutral Citation not visible in uploaded copy)
Court: High Court of Delhi
Hon’ble Judge: Justice Tushar Rao Gedela
Disclaimer: Readers are advised not to treat this as substitute for legal advise 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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