Failure to Adjudicate Process Claims in Patent Applications Vitiates Administrative Orders and Warrants Remand

The Appellant filed an Indian Patent Application (No. 6101/DELNP/2014) on 21.07.2014 for a "thieno[3,2-d]pyrimidine derivative"

Following a First Examination Report and a subsequent hearing, the Appellant submitted a revised set of 22 claims on 24.06.2021

These included product claims (Claims 1-13) for the chemical compound and process claims (Claims 14-22) for the method of preparation

On 25.04.2022, the Controller issued the "impugned order" refusing the application on the grounds of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act, 1970

The Appellant challenged this order on the basis that the Controller failed to consider the process claims.

Whether the impugned order passed by the Controller is sustainable in law given the alleged failure to adjudicate upon the process claims (Claims 14 to 22)

The court applied the procedural requirements of the Patents Act, 1970, specifically focusing on the duty of the Controller to examine and adjudicate upon all claims presented in an application

The refusal of a patent application must be based on a comprehensive analysis of all sets of claims—both product and process—especially when such claims are distinct and specifically pleaded

The High Court observed that while the impugned order analyzed the product claims (Claims 1-13) by comparing them with prior art documents D1 and D2, it was "completely silent" regarding the process claims (Claims 14-22)

The Court noted that Claim 14 specifically detailed a three-step method for preparing the compound of Formula (I), yet the Controller provided no findings on its patentability

During the proceedings, the learned Central Government Standing Counsel (CGSC) for the Respondent admitted that the process claims were indeed not dealt with in the impugned order

Consequently, the Court found the order to be procedurally deficient and non-reasoned regarding a substantial portion of the application.

The Court set aside the order and remanded the matter back to the Patent Office for fresh consideration. The Controller is directed to afford the Appellant a fresh hearing and decide the application on its merits within six months, ensuring all claims are addressed