Delhi High Court Quashes Unreasoned Patent Refusal To AbbVie, Flags Inconsistent Maintainability Findings

The Delhi High Court on 29 April set aside an order of the Deputy Controller of Patents and Designs refusing a patent application filed by Abbvie Ireland Unlimited Company, holding that refusal orders must be reasoned and that divisional applications cannot be rejected on inconsistent maintainability grounds without proper analysis of the record.

Justice Jyoti Singh quashed the order and remanded the matter for fresh consideration. She observed:

“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”

The case arose from a divisional patent application filed by AbbVie in November 2019 relating to a process for preparing an intermediate compound used in the manufacture of an apoptosis-inducing agent. AbbVie already held a parent patent (IN'328705) covering a process for preparing the final compound.

The Deputy Controller rejected the divisional application in March 2024 on two grounds: that the claims were already covered under the parent patent and that the invention lacked inventive step in view of four prior art documents.

AbbVie challenged the refusal before the High Court, arguing that the divisional application had been filed in response to a unity of invention objection raised during examination of the parent application. It submitted that once the Patent Office itself requires division, the applicant cannot later be denied the right to pursue the divisional application on maintainability grounds.

The Court accepted this contention. It held that the maintainability finding was contained in a single unreasoned paragraph that failed to engage with AbbVie's submissions distinguishing the divisional claims from the parent patent. It reiterated that “reasons form the heart and soul of an order,” enable parties to understand the basis of the decision and facilitates judicial review.

The Bench further found that the two sets of claims disclosed distinct inventive concepts. The parent patent related to a multi-step process for preparing the final compound (formula A1), while the divisional application concerned a single-step process for preparing only the intermediate compound (formula C).

It noted that this distinction had practical significance, since a patentee holding only the parent patent could not prevent third parties from dealing solely in the intermediate without producing the final product, whereas a divisional patent would cover that gap.

On inventive step, Justice Singh observed that although the Patent Office had relied on four prior art documents and prepared comparative tables, it had not adequately engaged with AbbVie's technical submissions and distinctions.

Accordingly, the High Court set aside the impugned order and remitted the matter to the Patent Office for fresh adjudication within four months. It clarified that it expressed no opinion on the merits of the application.