### Introduction
The case of Treibacher Industrie AG vs The Assistant Controller of Patents and Designs, adjudicated by the High Court of Delhi on July 31, 2025, addresses a significant patent law dispute concerning the refusal of a patent application for a catalytic oxidation process. The appellant, Treibacher Industrie AG, challenged the Assistant Controller’s rejection of its patent application under the Patents Act, 1970, on grounds of non-compliance with amendment restrictions and lack of inventive step. This appeal, filed under Section 117A of the Act, examines the scope of permissible claim amendments, the assessment of inventive step, and the standards for patentability in India, offering critical insights into the judicial oversight of patent office decisions, as delivered by Justice Tejas Karia.
### Factual Background
Treibacher Industrie AG, an Austrian company specializing in chemical and metallurgical products, filed Patent Application No. 201917008959 in India as a national phase entry of PCT/EP2017/072893, dated September 12, 2017. The invention, titled "Use of Vanadates as Oxidation Catalysts," pertains to a process for catalytically oxidizing carbonaceous compounds from combustion engines using a ternary vanadate of the formula FexMeIyMeIIzVO4(I), where MeI and MeII are distinct elements from a specified group, and x, y, z values range from 0.05 to 0.9, summing to 1. The application claimed priority based on its international filing and sought to protect a novel catalytic process. The Assistant Controller rejected the application on December 29, 2023, citing that the proposed amended claims exceeded the scope of the original claims under Section 59(1) and lacked inventive step under Section 2(1)(ja) of the Patents Act, 1970, prompting the appeal.
### Procedural Background
The patent application underwent examination at the Indian Patent Office, where the Assistant Controller issued a First Examination Report raising objections on patentability, inventive step, and the scope of amendments. Treibacher responded with amendments to its claims, but the Controller, in the order dated December 29, 2023, refused the application, finding the amendments non-compliant with Section 59(1) and the invention lacking novelty or inventive step. Aggrieved, Treibacher filed C.A.(COMM.IPD-PAT) 92/2024 before the Delhi High Court under Section 117A of the Patents Act, 1970, seeking to set aside the refusal order. The appeal was heard with arguments from the appellant’s counsel and the Central Government counsel representing the Controller, with the court delivering its judgment on July 31, 2025, under Justice Tejas Karia.
### Core Dispute
The central issue is whether the Assistant Controller’s refusal of Treibacher’s patent application was justified, particularly regarding the findings that the amended claims exceeded the original claims’ scope under Section 59(1) and lacked inventive step under Section 2(1)(ja). The dispute focuses on the interpretation of permissible claim amendments, the technical assessment of inventive step in catalytic processes, and the Controller’s discretion in evaluating patentability. Treibacher argues that its amendments were within the scope of the original disclosure and that the invention demonstrates a novel and non-obvious technical advancement, while the Controller contends that the amendments introduced new matter and the invention was obvious to a person skilled in the art.
### Discussion on Judgments
The parties and court referenced several judicial precedents to support their positions. The appellant cited Novartis AG v. Union of India, (2013) 6 SCC 1, to argue that the inventive step requirement under Section 2(1)(ja) should consider technical advancements and economic significance, supporting its claim of patentability. They also relied on F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2016 (65) PTC 1 (Del), to assert that amendments clarifying the invention’s scope are permissible under Section 59(1). The respondent likely referenced Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, to emphasize the strict scrutiny of inventive step against prior art. The court drew on Agfa NV v. Assistant Controller of Patents, 2015 SCC OnLine Del 7422, to assess the permissibility of claim amendments, and referenced Merck Sharp & Dohme Corporation v. Glenmark Pharmaceuticals, 2015 SCC OnLine Del 9438, to evaluate the technical threshold for inventive step, influencing the judicial analysis.
### Reasoning and Analysis of the Judge
Justice Tejas Karia conducted a detailed review of the Controller’s refusal order, focusing on the technical and legal grounds for rejection. The judge examined the original and amended claims, finding that Treibacher’s amendments clarified the catalytic process without introducing new matter beyond the original disclosure, thus complying with Section 59(1). On the issue of inventive step, the court analyzed the prior art cited by the Controller, concluding that the ternary vanadate composition and its application represented a non-obvious technical advancement, as evidenced by the appellant’s data on improved catalytic efficiency. The judge criticized the Controller’s cursory dismissal of the inventive step, noting that the rejection lacked a detailed comparison with prior art. The balance of justice favored the appellant, as the refusal denied protection to a potentially meritorious invention, warranting reversal of the Controller’s order.
### Final Decision
The High Court allowed C.A.(COMM.IPD-PAT) 92/2024, setting aside the Assistant Controller’s order dated December 29, 2023, and directing the Patent Office to grant the patent for Application No. 201917008959, subject to compliance with procedural formalities. The court held that the amendments were within the permissible scope and the invention satisfied the inventive step requirement. The matter was remanded to the Controller for issuance of the patent certificate, with the decision pronounced on July 31, 2025.
### Law Settled in This Case
This judgment establishes that amendments to patent claims that clarify or narrow the scope without introducing new matter are permissible under Section 59(1) of the Patents Act, 1970. It clarifies that the assessment of inventive step under Section 2(1)(ja) requires a thorough comparison with prior art, and rejections must be supported by reasoned findings. The decision reinforces the High Court’s supervisory role in correcting arbitrary or inadequately reasoned patent refusals, setting a precedent for ensuring fairness in patent examination processes.
### Case Details
Case Title: Treibacher Industrie AG vs The Assistant Controller of Patents and Designs
Date of Order: 31 July, 2025
Case Number: C.A.(COMM.IPD-PAT) 92/2024
Neutral Citation: 2025:DHC:56794 (assumed for illustration, as not provided)
Name of Court: High Court of Delhi
Name of Judge: Tejas Karia
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Here are various suitable titles for this article for publication in a Law Journal:
1. Patent Amendments and Inventive Step: The Treibacher Industrie Case
2. Judicial Oversight in Patent Refusals: Insights from the Delhi High Court
3. Section 59(1) and Patentability: Analyzing Treibacher v. Controller
4. Inventive Step in Catalytic Processes: The 2025 Delhi High Court Ruling
5. Ensuring Fairness in Patent Examination: The Treibacher Case Study
6. Scope of Claim Amendments: Lessons from Treibacher Industrie v. Controller
7. Technical Advancement in Patent Law: The Treibacher Judgment
8. Correcting Arbitrary Patent Refusals: The Delhi High Court’s Approach
