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2025 Supreme(Del) 741
IN THE HIGH COURT OF DELHI AT NEW DELHI
TEJAS KARIA, J.
Treibacher Industrie AG - Appellant
Versus
The Assistant Controller Of Patents And Designs – Respondent
C.A.(COMM.IPD-PAT) 92 of 2024
Decided On : 31-07-2025
Important Points
Subject
Intellectual Property - Patent Law
Act Referred
Headnote
(B) Principles of Natural Justice - The requirement of a reasoned decision is fundamental to natural justice - The Controller’s order lacked proper reasoning and failed to consider the submissions from the appellant suggesting that the claims remained within the scope of the PCT application. (Paras 30-32)
(C) Patentability - Amended claims must align with the initial filing; however, the learned Controller did not identify specific claims that fell outside this scope, rendering the order insufficient. (Paras 26-29)
Facts of the case:
The appellant sought patent for a process involving the use of ternary vanadates as catalysts in combustion engines, but the application was denied on the grounds of lacking novelty and inventive step as well as the scope of amendments violating Section 59(1).
Findings of Court:
The appeal was allowed, the impugned order set aside, and the application remanded for reconsideration.
Issues: Main legal questions included whether the amended claims fit within the scope of initial claims and if the Controller's reasoning met the standards of natural justice.
Ratio Decidendi: The court found that the Controller’s lack of a reasoned decision violated natural justice, as the order did not provide clarity on how the amended claims diverged from original submissions.
Result: Appeal allowed; application remanded for fresh consideration.
For the Appellant :Dr. Chitra Arvind & Ms. Rasya Rawal, Advocates.
For the Respondent:Mr. Sumit Nagpal, SPC with Mr. Rudra Paliwal, Mr. Tanmay Saini, Ms. Aakanksha Singh, Advocates.
| Table of Content |
|---|
| 1. overview of the patent application and objections (Para 1 , 2 , 3 , 4 , 5 , 6 , 7 , 8) |
| 2. arguments presented by the appellant regarding the controller's decision (Para 9 , 10 , 11 , 12 , 13 , 14 , 15 , 16 , 17) |
| 3. arguments presented by the respondent against the appellant's claims (Para 18 , 19 , 20 , 21) |
| 4. analysis of the claims and objections raised (Para 22 , 23 , 24 , 25) |
| 5. court's observations on the lack of reasoning in the impugned order (Para 26 , 27 , 28 , 29 , 30 , 31 , 32 , 33 , 34) |
| 6. conclusion and remand for reconsideration of the application (Para 35) |
JUDGMENT :
TEJAS KARIA, J.
INTRODUCTION
1. The present Appeal has been filed against the order dated 29.12.2023 (“Impugned Order”) passed by the Assistant Controller of Patents and Designs (“Controller”) refusing the grant of patent in respect of the Patent Application bearing No. 201917008959 (“Application”) on the grounds that the proposed amended claims are beyond the scope of the original claims filed at the time of filing.
2. The learned Controller rejected the Application under Section 59(1) of the Patents Act, 1970 (“Act”) and lack of inventive step under Section 2(1)(ja) of the Act, and due to lack of patentability. The invention of the Appellant was filed in India as a national phase entry of the Patent Cooperation Treaty Application being PCT/EP2017/072893 dated12.09.2017 (“PCT Application”).
FACTUAL BACKGROUND
3. The invention under the Application wastitled as “USE OF VANADATES AS OXIDATION CATALYSTS”and filed regarding a process of catalytically oxidising carbonaceous compounds from a combustion engine in the presence of a ternary vanadate of Formula(I). The Formula(I) is represented as 
wherein “MeI” and “MeII” are different from each other and stand for an element selected from the group of elements consisting of Y, La, Ce, Pr, Nd, Sm, Er, Gd, Tb, Dy, Ho, Tm, Yb, Lu, Al, Bi, Sb, wherein the values of x, y, and Z are 0.05-0.9, 0.05-0.9 and 0.05-0.9 and x + y + z = l.
4. The Appellant, thereafter, suo moto amended the claims after entering India as a National Phase Application based on the PCT Application.
5. In the First Examination Report (“FER”) dated 25.03.2021, substantive objections were raised by the Patent Office, which are as under:
(i) Novelty under Section 2 (1)(j) of the Act.
(ii) Inventive Step under Section 2(1)(ja) of the Act
(iii) Non-Patentability under section 3(d) and 3(e) of the Act.
(iv) Sufficiency of Disclosure under Section 10(1) of the Act.
(v) Clarity and Conciseness under Section 10(5) of the Act.
(vi) Definitiveness under Section 10(4)(c) of the Act.
6. Responding to the objection raised in FER, the Appellant, on 18.09.2021, filed a Response along with amended claims. Thereafter, vide a Hearing Notice dated 22.09.2022, a hearing was scheduled on 27.10.2022, which, on the request from the Appellant, was adjourned to 21.11.2022. Subsequently, another adjournment was sought by the Appellant on 16.12.2022, and the learned Controller rescheduled the hearing to 21.12.2022. The Appellant, through its agents, attended the hearing on 21.12.2022, at 12:30 pm through video conferencing. The Appellant submitted its defence during the hearing, and thereafter, the Written Submissions (“WS”) were submitted on 20.01.2023
7. On 19.12.2023, the learned Controller passed the Impugned Order, refusing the Application under Section 59(1) of the Act on the ground that the proposed amended claims were beyond the scope of the claims filed during the time of filing and there was a lack of inventive step under Section2(1)(ja) of the Act and lack of patentability, in general.
8. Being aggrieved by the Impugned Order of the learned Controller, the Appellant has filed the present Appeal.
SUBMISSIONS ON BEHALF OF THE APPELLANT
9. The Appellant, 'TREIBACHER INDUSTRIE AG', is a company incorporated under the laws of Austria, which was established in 1898 by Dr. Carl Auer von Welsbach, who was a world-renowned inventor, discoverer, and entrepreneur.
10. The lea
