Delhi High Court Slams Cryptic Patent Refusal, Remands Fertin Pharma Application For Re-Consideration

The Delhi High Court on 18 February set aside an order by the Assistant Controller of Patents and Designs that had rejected a patent application from Fertin Pharma A/S, observing that the regulator failed to provide the requisite reasoning expected of a quasi-judicial authority.

Justice Tushar Rao Gedela observed that the original refusal was “cryptic,” whereas reasoning is “the bedrock of all orders, including those passed by quasi-judicial authorities.”

The Court was hearing an appeal under Section 117A of the Patents Act, 1970, in which Fertin Pharma challenged the rejection of its patent application for a composition for chewing gum comprising more than 30% calcium carbonate by weight and over 20% organic water-insoluble components by weight.

In the order, the Assistant Controller contended that the subject matter claimed by Fertin Pharma did not qualify as an invention because it appeared obvious to a person skilled in the art.

The regulator also argued that a claim regarding a three-layer tablet was inconsistent and unsupported, as the company's specification only provided examples for two-layer tablets. Based on these observations, the Patent Office concluded that the application failed to meet the requirements of the Patents Act.

While the First Examination Report had raised a wide range of objections, the Court noted that the subsequent hearing notice focused specifically on lack of novelty and sufficiency of disclosure.

Justice Gedela remarked that the Assistant Controller merely cited the names of four prior art documents without analyzing them against the company's specific claims or explaining how they rendered the invention unpatentable. He observed:

“The Assistant Controller is required, indeed mandated by the Act as a quasi-judicial authority, to give reasons for such refusal. The impugned order, however, only references prior art documents D-1 to D-3 without further reasoning. This does not fulfill the mandate under Section 15 of the Act.”

The Bench further noted that:

“The analysis in the impugned order appears cryptic because it only refers to the four prior arts — D-1, D-2, D-3, and D-4 — to conclude that the amended claim no.1 does not meet the requirement of Section 2(i)(ja) of the Act, and therefore was refused.”

While the Court clarified that this direction was not a reflection on the integrity of the previous official, it ordered that the de novo consideration be completed within four months.

Accordingly, the High Court set aside the impugned order and directed that the application be re-examined by a different Assistant Controller.