In the August 7 order passed in Esteve Pharmaceuticals S.A. vs Controller of Patents and Designs (2026), the Delhi High Court adopted a tiered approach in examining the grounds for rejecting a patent application. It accepted that the invention “Co-crystals of Tramadol and Coxibs” was novel (differing from the Controller on 2(1)(j)), but it lacked inventive step (upholding the Controller’s objections under 2(1)(ja)). And because it lacked inventive step, the Court did not find examining further under 3(d) and 3(e) to be judicially economical.
To back their judicial economy reasoning, they cited Kroll Information Assurance, LLC vs. The Controller General of Patents, Designs, and Trademarks and Ors (2025). But here, the Court held that the Controller has rightly refused the subject patent application under Section 3(k), and it was not necessary to examine the sustainability of the rejection under Section 2(1)(j).
This had me scratching my head because what came first- chicken or egg? Was it sound to evaluate under 2(1)(ja) and then decide whether 3(d) and 3(e) should be evaluated as in Esteve? Or was it sound to first strike the application based on what is not patentable under Section 3(k) and not evaluate further under 2(1)(j), as in Kroll?
To cure the head-scratcher, I looked at-
- Manual of Patent Office Practice and Procedure 2019 and, for that matter, the new Draft Manual of Patent Office Practice and Procedure 2026.
- Guidelines for Examination of Patent Applications in the Field of Pharmaceuticals
- Guidelines for Examination of Computer-Related Inventions (CRIs).
These do not explicitly state whether there is already a specific order of assessment. Chapter 9 of both the Manuals addresses examination criteria and treats Section 3 and Section 2(1)(j)/2(1)(ja) as independent evaluation standards during examination, but does not mention a step-by-step sequence in which the examiner must evaluate them.
Also, on a side note, these are guidelines and manuals that do not have a binding effect and are limited to how the Controller’s examination should be conducted.
Step-by-step Sequencing Spotted.
Recently, T-Mobile vs CGPDTM laid down seven-step guidelines which clearly demarcate the boundaries between novelty, inventive step, and exclusions under Section 3(m). Step 6, herein, makes sure Section 3(m) is not misused to reject a claimed invention merely because it appears to be an obvious or trivial advance (see here). To support the validity of this Step, the Court invoked the Supreme Court’s ruling in Novartis AG v. Union of India (2013) that clarifies that Section 3 cannot be bypassed only because an invention is deemed obvious.
Even logically, Section 3 starts with: “The following are not inventions within the meaning of this Act-”. So then, is it possible to analyse inventive step under 2(1)(ja) without checking if the law even terms that subject matter as an invention in the first place?
And so I think that by citing Kroll, where Section 3 was used to bypass inventive step or novelty examination, to justify doing the opposite in Esteve, the Delhi High Court did not just fail to practice judicial economy (as also discussed here in a similar MHC matter); it also put the cart before the horse.