Delhi HC Sets Aside Order Rejecting South Korean Pharma Firm's Patent plea
Delhi High Court
New Delhi: The Delhi High Court has set aside an order passed by the Controller of Patents and Designs rejecting a patent application filed by Hanmi Pharm, holding that the Patent Office failed to examine the process claims contained in the application before refusing the patent.
Justice Tushar Rao Gedela passed the judgment in Hanmi Pharm. Co. Ltd. v. The Controller General of Patents and Designs on May 11, 2026.
The case arose from an appeal filed under Section 117A of the Patents Act, 1970 challenging the April 25, 2022 order of the Controller refusing Indian Patent Application No. 6101/DELNP/2014. The patent application related to “thieno[3,2-d]pyrimidine derivative” compounds and their preparation methods, and had been rejected on grounds including lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act.
The petitioner, Hanmi Pharm, argued that the Patent Office had failed to properly consider the amended claims submitted after the hearing process. The company pointed out that while the impugned order analyzed certain product claims, it completely ignored Claims 14 to 22, which specifically related to the process or method of preparing the claimed pharmaceutical compounds. The appellant emphasized that these process claims formed an independent and substantial part of the patent application and required separate consideration on merits before any final rejection could be made. The company also highlighted that amended claims had been submitted along with post-hearing written submissions after participating in the hearing conducted by the Patent Office.
On the other hand, the respondent, the Controller General of Patents and Designs represented through the Central Government Standing Counsel, defended the impugned order initially on the basis of the objections recorded in the First Examination Report and hearing notice, which included lack of novelty, inventive step, and objections under Section 3(d) of the Patents Act. However, during the course of the proceedings before the High Court, the Court specifically questioned whether the process claims had been dealt with in the rejection order. Pursuant to the Court’s query, the respondent ultimately admitted during the hearing on May 4, 2026 that the process claims were in fact not considered in the impugned order.
The High Court observed that the Controller’s order primarily focused on Claims 1 to 13 while examining prior art documents and failed to discuss or analyze Claims 14 to 22, which related to process claims. The Court noted that Claim 14 specifically covered a method of preparing the thieno[3,2-d]pyrimidine compound claimed in Claim 1 and included a three-step preparation process. The Court held that ignoring these claims amounted to a serious defect in the decision-making process. The bench observed that it was “incumbent upon the learned Controller to consider the Process Claims as well” before rejecting the application. The Court further noted that once the respondent itself admitted that the process claims were not examined, it became difficult to sustain the rejection order in law.
Allowing the appeal, the court ordered that:
"The impugned order dated 25.04.2022 passed by the learned Controller cannot be sustained and is set aside. Consequently, the matter is remanded back to the Patent Office for fresh consideration.”
The court further directed the following:
“The learned Controller shall afford a fresh opportunity of hearing to the appellant before deciding the subject application.”
The Court also ordered that the matter be reconsidered and decided within six months and clarified that the Controller should decide the matter independently and “uninfluenced by any observations in this decision".
To view the order, click the link below:
