Delhi High Court Sets Aside Unreasoned Refusal Of AbbVie’s Divisional Patent Application, Orders Fresh Review
Introduction
The Delhi High Court has set aside an order refusing a patent application filed by AbbVie Ireland Unlimited Company, holding that refusal of patent applications must be supported by proper reasoning and consistent findings on maintainability. Justice Jyoti Singh quashed the order passed by the Deputy Controller of Patents and Designs and remanded the matter for fresh consideration
The Court observed that, “Refusing a patent application is a serious matter as it not only takes away the hard work, labour and skill of applicant invested over years but may also result in an important invention being lost in the process, which would be detrimental to public interest”
Factual Background
AbbVie filed a divisional patent application in November 2019 relating to a process for preparing an intermediate compound used in manufacturing an apoptosis-inducing agent. The company already held a parent patent bearing No. IN’328705, which is related to a process for preparing the final compound. During examination of the parent application, the Patent Office had raised a unity of invention objection, following which AbbVie proceeded to file the divisional application.
Procedural Background
In March 2024, the Deputy Controller of Patents and Designs rejected the divisional application on the ground that the claims were already covered under the parent patent and further held that the invention lacked inventive step in light of four prior art documents. AbbVie challenged the refusal order before the Delhi High Court.
Issues
1. Whether the divisional patent application was maintainable.
2. Whether the Patent Office could reject the divisional application on grounds inconsistent with the earlier unity of invention objection.
3. Whether the refusal order suffered from lack of reasoning.
4. Whether the inventive step analysis had been properly conducted.
Contentions of the Parties
AbbVie argued that the divisional application had been filed pursuant to the unity of invention objection raised by the Patent Office itself during examination of the parent application. It contended that once the Patent Office required division of claims, the applicant could not subsequently be denied the right to pursue the divisional application on maintainability grounds.
The company further submitted that the divisional claims related specifically to preparation of an intermediate compound, whereas the parent patent covered a broader multi-step process for preparing the final compound. AbbVie also challenged the inventive step findings and argued that the Patent Office failed to properly examine its technical submissions distinguishing the cited prior art references.
The Patent Office maintained that the divisional claims were already encompassed within the parent patent and lacked inventive step in view of the cited prior art documents.
Reasoning and Analysis
The High Court found that the maintainability finding in the impugned order was contained in a single unreasoned paragraph and failed to engage with AbbVie’s detailed submissions distinguishing the divisional claims from the parent patent. The Court reiterated that reasons form the heart and soul of an order and emphasised that reasoned decisions are necessary both for the parties to understand the basis of the decision and for effective judicial review.
Justice Singh observed that the parent patent and the divisional application disclosed distinct inventive concepts. While the parent patent related to a multi-step process for preparing the final compound, the divisional application concerned only a single-step process for preparation of the intermediate compound.
The Court further noted that this distinction had practical significance because a patentee holding only the parent patent may not be able to restrain third parties dealing solely in the intermediate compound without manufacturing the final product, whereas protection through the divisional patent would address that gap.
On an inventive step, the Court observed that although the Patent Office relied upon four prior art documents and prepared comparative tables, it failed to adequately address AbbVie’s technical distinctions and submissions. The Court therefore held that the refusal order could not be sustained.
Decision
The Delhi High Court quashed the refusal order passed by the Deputy Controller of Patents and Designs and remanded the matter for fresh adjudication within four months. The Court clarified that it had expressed no opinion on the merits of the patent application.
In this case the appellant was represented by Advocates Pravin Anand, Archana Shankar, Sachin Malik, Shrawan Chopra and Achyut Tewari. Meanwhile the respondent was represented by SPC Shiva Lakshmi with Advocates Praver Dennison and Anugya Gupta along with Sunita Rani, Deputy Controller.