Abbvie Ireland Unlimited Company vs Deputy Controller Of Patents Designs

$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of Decision: 29 April, 2026
+ C.A.(COMM.IPD-PAT) 65/2024
ABBVIE IRELAND UNLIMITED COMPANY .....Appellant
Through: Mr. Pravin Anand, Ms. Archana
Shankar and Dr. Sachin Malik, Mr. Shrawan
Chopra and Mr. Achyut Tewari, Advocates.

versus

DEPUTY CONTROLLER OF PATENTS DESIGNS
.....Respondent
Through: Ms. Shiva Lakshmi, SPC with Mr.
Praver Dennison and Ms. Anugya Gupta,
Advocates.
Dr. Sunita Rani, Deputy Controller through VC.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J. (ORAL)

1. This appeal is filed on behalf of the Appellant under Section 117(A)
of the Patent Act, 1970 (‘1970 Act’) read with Rule 6 of the Delhi High
Court Intellectual Property Rights Division Rules, 2022 (‘2022 Rules’) read
with Section 151 CPC challenging impugned order dated 30.03.2024 passed
by the Respondent refusing Indian Patent Application No. 201918048639.
2. To the extent necessary, the facts are that the Appellant filed the
subject application bearing No. 201918048639 in Indian Patent Office on
27.11.2019 derived from Parent Application No. 8479/DELNP/2015 (Patent
No. 328705) titled ‘PROCESSES FOR THE PREPARATION OF AN
APOPTOSIS-INDUCING AGENT’. Request for Examination was filed on
27.11.2019 and the application was published on 07.02.2020. The patent
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application was filed with PCT claims 1-30 on 15.09.2015 and the
application was examined and First Examination Report (‘FER’) was issued
on 31.05.2019 raising objections inter alia on ground of lack of inventive
step under Section 2(1)(ja) of 1970 Act. Response was filed by the
Appellant to the FER on 15.09.2020 along with claim amendment. After the
hearing, which concluded on 28.11.2023, Appellant filed post-hearing
written submissions on 13.12.2023. By impugned order dated 30.03.2024,
Respondent refused the application on the ground that objections raised in
the hearing notice were outstanding and Appellant’s agent did not comply
with technical objections of Sections 16 and 2(1)(ja) of 1970 Act for lack of
inventive step.
3. Appellant is stated to be a leading pharmaceutical company engaged
in manufacture and sale of pharmaceutical and medicinal products and has
to its credit several patented inventions. It has grown leaps and bounds with
its research and development facility. The claimed invention relates to
process for preparing an intermediate compound of formula (C) used in
preparation of compound of formula (A1):

4. It is stated in the appeal that several inventions have been disclosed in
the PCT Application No. PCT/US2014/024224 inter alia a process for
preparing the compound of formula (A1) as well as additional invention,
including process for preparing an intermediate compound of formula (C).
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Divisional Application was filed by the Appellant with claims 1-16, which
were directed to a process of preparing compound of formula (C)
(claims 1-6); a compound for formula D
(claims 7-10); and a compound of formula (3)
and process for preparation of
the same (claims 11-16).
5. It is stated that on 28.11.2019, Appellant filed claim amendment to
delete claims 7-16 and retain claim set 1-6. FER was issued by the
Respondent on 16.03.2020, in which the substantive objections were:
(a) The instant divisional application of claims 1-6 was not
allowable under Section 16 of 1970 Act as the same claims were
already granted in parent application; and

(b) The claimed invention lacked inventive step in view of prior art
documents: D1: WO2011/150016 A1; D2: ARRENDONDO ET AL,
"Preparation of 1-5 t- Butyl-3- Bromo-5- Formylbenzoate Through
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Selective MetalHalogen Exchange y Reactions, ORGANIC
SYNTHESES, vol. 89, 1 January 2012 (2012-01-01), page 460; D3:
T. RAUSIS ET AL, "The Basicity Gradient- Driven Migration of
Iodine: Conferring Regioflexibility on the Substitution of
Fluoroarenes", EUR. J. ORG. CHEM., (20020101), pages 3351–3358;
and D4: V. BAVETSIAS ET AL, "Synthesis of N-substituted
derivatives of tert-butyl 4- aminobenzoate via a palladium catalysed
reaction", J. CHEM. RESEARCH (S), (20000901), pages 418-419.

6. It is stated that Appellant filed response to the FER on 15.09.2020
distinguishing the claimed invention from prior arts D1-D4 and also
contesting the objection that the divisional application was not maintainable.
In the hearing notice dated 23.11.2023, Respondent maintained the ground
of maintainability of the divisional application in view of IN 328705, the
parent application as also objection with regard to lack of inventive step of
claims 1-6. Post-hearing submissions were filed by the Appellant on
13.12.2023. Respondent refused the application under two heads: (a) each
and every feature of present invention was obvious from the teachings of
D1-D4; and (b) claims of divisional application were not maintainable under
Section 16 of 1970 Act as the same claims were granted as claims 14-18 in
IN’705.
7. Challenging the impugned order, Mr. Pravin Anand, learned counsel
for the Appellant submits that finding of the Respondent with regard to
maintainability of the divisional application under Section 16 is wholly
erroneous. Respondent failed to appreciate that claim 26, which relates to
process for preparing the intermediate C was held as being related to distinct
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invention in the FER of Parent Application No. 8479/DELNP/2015. Having
raised an objection of unity of invention, Appellant cannot be denied a right
to file divisional application for the subject matter. Reference is made to
orders passed by the Intellectual Property Appellate Board (‘IPAB’) in
Milliken & Company v. Union of India through the Secretary Department
of Industry, Ministry of Industry and Commerce and Others, 2016 SCC
OnLine IPAB 7; Syntonix Pharmaceuticals, Inc., (A United States
Corporation) of 9 Fourth Avenue, Waltham MA 02451 United States of
America v. The Controller of Patents & Designs, Bouddhik Sampada
Bhavan Near Antop Hill Post Office S.M. Road, Antop Hill, Mumbai-
400037 and Another, 2014 SCC OnLine IPAB 28; and National Institute
of Immunology Aruna Asaf Ali Marg, New Delhi - 110 067 v. The
Assistant Controller of Patents & Designs, The Patent Office, Boudhik
Sampada Bhawan Plot No. 32, Sector-14, Dwarka, New Delhi - 110 075,
2015 SCC OnLine IPAB 80 , where it was held that once the Applicant files
a divisional application owing to an objection raised by the Patent Office, it
cannot be denied the right to file a divisional application and be left in a
lurch. Hence, on this ground alone, the impugned order deserves to be set
aside.
8. It is further urged that even otherwise, Respondent failed to appreciate
that claims of parent application as granted and claims 1-6 in the present
divisional application relate to two distinct inventive concepts. Claims of
parent application are directed to a process of preparing a compound of
formula (A1), whereas claims of divisional application are directed to a
process for preparing intermediate compound for formula (C). The error is
writ large when Respondent refers to claims of present application as falling
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within the scope of claims 14-18 of the parent application. Claim 14 is a
dependent claim and part of the process of preparing compound of formula
(A1) as detailed below:-
(i) Parent IN328705 is directed to a process for preparing the compound
of formula A1

which comprises:
(a) combining a compound of formula (K) with a tert-
butoxide salt, an aprotic organic solvent, and water to provide a
compound of formula (L):
And
(b) combining the compound of formula (L) with 1-ethyl-3-
(dimethylaminopropyl)carbodiimide hydrochloride, 4-
dimethylaminopyridine, an organic solvent, and either a
compound of formula (N), to provide a compound of formula (A1)
or a compound of formula (P), to provide a compound of formula
(A1):
wherein the compound of formula (K) is prepared by:
(c) combining a compound of formula (D) with a compound
of formula (I): a source of palladium, a tert-butoxide salt and a
phosphine ligand in an aprotic organic solvent to provide the
compound of formula (K).
9. It is urged that the process as claimed in any one of claims 1-6 and
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7-12 is where the process further comprises combining a compound of
formula (B) with a compound of formula (C) and a tert-butoxide salt in an
organic solvent to provide the compound of formula (D) and the process as
claimed in claim 13 is where the compound of formula (C) is prepared by:
1
(a) combining a compound of formula (A) with R MgX in an aprotic
organic solvent; and (b) combining a C to C alkyl chloroformate or a di-
1 12
(C 1 to C 12 alkyl) decarbonate with the product of step (a), to provide the
compound of formula (C). It is thus clear that invention involved in the
parent application was in relation to preparation of compound of formula A1
(final product) whereas the claims of the present divisional application
claims 1-6 is directed to a process for preparing intermediate i.e., a
compound of formula (C):

10. To explain the point further, Mr. Anand draws the attention of the
Court to a chart as follows and also relies on the judgment of the Division
Bench of this Court in F.Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd.,
2015 SCC OnLine Del 13619 , wherein while elucidating principles of claim
construction, the Court observed that where the claims are ‘dependent’, they
incorporate by reference ‘everything in the parent claim and add some
further statement, limitations or restrictions and submits that claim 14 of the
parent application is an integral part of the entire scheme and process for
preparing compound of formula (A) and in contrast, the divisional
application is only for a process for preparing the intermediate. He further
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submits that a process for preparing compound of formula (A1) and process
for preparing intermediate are two different inventions. For instance, a
patentee may not be able to file a law suit for infringement against the third
party, which only prepares the intermediate according to claim 14 of the
parent case unless the third party also uses the same process to prepare a
compound of formula (A1) but on the other hand, the process of preparing
the intermediate as claimed in the divisional application, as and when
granted, may entitle the patentee to file a law suit against manufacture of
intermediate even though the third party is not making the final product i.e.,
compound of formula (A1). Claim 1 of divisional application is a single step
process unlike the scope of claim 14 of parent application. For ready
reference, scope of claim 14 under parent application and scope of claim 1
of divisional application as brought forth by Mr. Anand is referred below:-

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Claim 1 of divisional application

11. Without prejudice to the preliminary contention that matter deserves
to be remanded on the sole ground that the divisional application has been
held to be non-maintainable, Mr. Anand submits that there is another fallacy
and grave error in the impugned order inasmuch as Respondent has neither
carried out any inventive step analysis with regard to prior arts D1-D4
before refusing the application on ground of lack of inventive step.
Respondent has simply reproduced the objection under the head of inventive
step in the hearing notice and FER. There is non-consideration of
submissions made by the Appellant in response to the FER and in relation to
D1, Respondent has simply reproduced pages 73 and 74 of document D1.
Insofar as D3 is concerned, Respondent has simply pasted the abstract and
representation of the said document and even in the comparative table,
paragraphs from D3 have been simply copied and pasted. In any event, there
is no teaching in D1 relating to process for preparing compound of formula
(C) as the said compound is distinct from formula (26) of D1 in terms of
structure since the latter contains - F at para-position to ester group in
contrast to the - F at ortho position. D1 also does not disclose or suggest any
method of preparing methyl 2,4-difluorobenzoate, much less by the method
recited in claims 1-6. Interestingly, there is no finding in the impugned order
as to how D1 renders the claim of the present application lacking in
inventive concept.
12. It is urged that D2 is directed to a process for preparation of t-Butyl-3-
Bromo-5-Formylbenzoate through selective Metal-Halogen Exchange
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Reactions and does not disclose or suggest any reaction starting with a
reactant having formula (A). Objective of D2 is to prepare t-butyl-3-bromo-
5-formylbenzoate (2) using t-butyl-3,5-dibormobenzoate (1) through metal-
halogen exchange reactions as also to make use of t-butyl esters as a
protecting group for the ester functionality in subsequent Grignard chemistry
instead of using methyl or ethyl esters and this objective is exemplified by
reaction of t-butyl-3,5 dibormobenzoate obtained by method with i-
propylmagnesium chloride with addition to dimethylformamide. Process of
compound (C) does not proceed using transition metal-catalyzed
carbonylation reactions. There is no reason to modify compounds disclosed
in D2 to arrive at compound of formula (A) since none of the compounds in
the cited reference comprise an iodo substituent. Further an ordinary skilled
person will have no reason to modify the reaction disclosed in D2 in view of
the disclosure therein that prior authors showed ‘good reactivity and very
high selectivity for metal-halogen exchange reactions of dibromoarenes
using lithium tri-n-butylmagnesium complex’ . D3 also does not disclose or
suggest any reaction starting with reactant having formula (A). The method
in D3 starts with compound 14, which comprises three halo substituents and
further discloses reacting intermediate compound with carbondioxide and
does not disclose or suggest C1 to C12 alkyl chloroformate or di-(C1 to C12
alkyldecarbonate required by the claims. D4 does not correct the
deficiencies of prior arts D1-D3. In fact, reason for reference to prior art D4
is not known inasmuch as it discloses techniques for coupling a substituted
phenyl compound and an amino compound by replacing a bromine atom,
which is a para position relative to a butoxide ester group. For all these
reasons, contends Mr. Anand that the matter deserves to be remanded for
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fresh consideration.
13. Arguing on behalf of the Respondent, Ms. Shiva Lakshmi, learned
SPC submits that subject matter of claims 1-6 of instant divisional
application are not allowable under Section 16 of 1970 Act as these very
claims stand granted in parent application from 14-18 claims. Additionally,
the subject matter of the divisional application lacks inventive step under
Section 2(1)(ja) of 1970 Act as the revised claims 1-6 are disclosed in all
four cited prior documents D1-D4 either alone or in combination and the
cited prior arts make the present claimed invention obvious to a person
skilled in the art. Compound 26 of D1 is having similar substituents as
claimed in present invention and have been derived from compounds of
formula (C), which are derived from compound A using similar process as
disclosed in present invention. D2 discloses the same chemical compound
and preparation process using same reactants under similar chemical
conditions employing same product i.e., compound (C), as in the claimed
invention. D3 also discloses similar product and preparation process as
detailed in the written submissions. Appellant has failed to provide any
advanced technical effect or significant distinguishing features over prior
arts. In fact, Appellant admitted in the original complete specification in
paragraphs [00108] to [00110] that compound (C) may be prepared by a
known method.
14. It is reiterated that Respondent has carried out detailed comparative
analysis between the claimed invention and the prior arts in the impugned
order before coming to a conclusion that each and every feature of present
invention is obvious from the teachings of D1-D4 and there is no technical
advancement pointed out. It is also urged that Appellant is under a
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misconception that the divisional application has been refused as not
maintainable contrary to the impugned order, which shows that application
has been refused on merits owing to lack of inventive step in view of prior
arts D1-D4.
15. Heard learned counsels for the parties and examined their
submissions.

16. In light of the argument made in Court on behalf of the Respondent
that the application has not been refused on maintainability, the first and
foremost question that needs to be considered is whether the instant
divisional application has been refused as not maintainable and on merit or
only on merit allegedly, owing to lack of inventive step. Contrary to the
submission made on behalf of the Respondent, a plain reading of the
impugned order shows that Respondent has captured two objections raised
in the FER: (a) subject matter of claims 1-6 of divisional application are not
allowable under Section 16 of 1970 Act as they are already granted in parent
application from 14-18 claims; and (b) lack of inventive step due to prior
arts D1-D4. In the first part of the order, Respondent referred to the
objection under Section 16 of 1970 Act and decided the objection in
paragraph 6.1 of the order as follows:-
“6.1. The subject matter of claims 1-6 of the instant divisional application
are not allowable u/s 16 of the Act, as the same claims are already
granted in parent application No. 8479/DELNP/2015 (Patent No. 328705)
from 14-18 claims. The process steps, reactants used, reagents used and
the product formed as given in the divisional application completely
conflicts with the already granted parent application No.
8479/DELNP/2015 (Patent No. 328705). Hence the claims 1-6 of instant
divisional application are not allowable as per the provisions of Section
16(3) of the Act, 1970.”

17. Having so held, Respondent decided the objection under Section
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2(1)(ja) of 1970 Act in paragraphs 7.1 to 7.12 and 8. Therefore, it is clear
that the Respondent has refused the divisional application both on
maintainability and for lack of inventive step under Section 2(1)(ja) of 1970
Act. Mr. Anand has referred to a host of points, which according to him
carve out a clear distinction between claims 14-18 of the parent application
and 1-6 of the claimed invention. None of these points have been analysed
and discussed by the Respondent for determining whether the claims of the
divisional application were granted under the parent application and in one
paragraph, which is unreasoned and non-speaking, maintainability has been
decided by observing that process steps, reactant use, reagents use and
product formed as given in the divisional application, completely conflict
with the already granted parent application. It has been consistently held by
Courts that reasons form the heart and soul of an order as a reasoned order
not only enables the party to know what factors weighed with the concerned
authority to take a decision against the party but also assists the Court,
examining the order, in adjudicating the legality of the order under
challenge. In any event, once the divisional application was filed at the
instance of the Controller, it was not open to the Respondent to reject the
same on the ground that the claims under the divisional application stood
granted under the parent application. In light of the decisions of IPAB cited
by Mr. Anand, which Respondent is unable to distinguish, the finding on
maintainability cannot be sustained in law.
18. Mr. Anand has taken pains to draw up what he considers are the
differences between claims 1-6 of the divisional application and claim 14
under the parent application and attempted to demonstrate the inventive step
for the purpose of Section 2(1)(ja) of the 1970 Act, by pointing out that
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claim 14 is a dependent claim and part of the process for preparing
compound of formula (A1), while process claimed in claims 1-6 is directed
to a process for preparing intermediate i.e., a compound of formula (C). He
has taken the Court through a flow chart which shows the five steps
involved in the scope of claim 14 and the single step process in claim 1 of
divisional application. No doubt, Respondent has examined the objection
under Section 2(1)(ja) of 1970 Act with respect to prior arts D1-D4, but
even here the Appellant urges that teachings of D1-D4, either standalone or
combined, do not lead to the claimed invention as these teachings are not
obvious to the person skilled in the art. It is also highlighted that detailed
submissions were made on behalf of the Appellant for alleged lack of
inventive step but they have not been dealt with in the impugned order, more
particularly, with respect to D1 and D4. It is urged that the objectives of D2
and claimed invention are completely distinct and that process of
preparation of compound (C) does not proceed using transition metal-
catalyzed carbonylation reactions, while one of the objectives of D2 was to
make use of t-butyl esters as a protecting group for the ester functionality in
subsequent Grignard chemistry instead of methyl or ethyl esters. In respect
of D3, it is urged that it does not disclose or suggest any reaction starting
with a reactant having formula (A) and the method to prepare compound 15
therein starts with a compound which comprises three halo substituents
which is not the same as compound of formula (A) recited in claims 1-6.
19. Court finds from the documents on record that Appellant has
elaborately brought forth what it perceived were the differences and
dissimilarities in the claimed invention and cited prior arts, some of which
have been captured above and in order to deal with the objection of lack of
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inventive step, Respondent has made comparative tables between present
invention and prior arts separately giving their objective, structure, reaction
scheme, reactants and product yield and concluded under each table that the
prior art disclose the claimed invention, however, there is no analysis of
similarities alleged nor any discussion on dissimilarities/differences, if any,
pointed out by the Appellant. 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 and hence, the
least that is expected is that all points raised in response to objections are
noted, discussed and analysed and a reasoned order is passed. I am not
delving into any further details on merits lest it may prejudice the case of
either side, since the matter is being remanded back for all the aforesaid
reasons.
20. Accordingly, impugned order dated 30.03.2024 is quashed and set
aside directing the Respondent to consider the divisional application being
Indian Patent Application No. 201918048639 afresh, after granting
opportunity to the Appellant and taking into account the written response to
the FER and hearing submissions filed before the Respondent on the
objection of lack of inventive step under Section 2(1)(ja) of the 1970 Act.
21. The decision will be taken as expeditiously as possible and not later
than four months from today. It is made clear that Court has not expressed
any opinion on the merits of the case.
22. Appeal is disposed of.

JYOTI SINGH, J
APRIL 29, 2026/ RW/ S.Sharma
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