$~5 * IN THE HIGH COURT OF DELHI AT NEW DELHI + C.A.(COMM.IPD-PAT) 25/2023 FERTIN PHARMA A/S .....Appellant Through: Mr. Kshitij Saxena, Mr. Saransh Vijay Vargiye and Mr. Daksh Oberoi, Advocates.

versus ASSISTANT CONTROLLER OF PATENTS AND DESIGNS .....Respondent Through: Mr. Arnav Kumar and Ms. Manya Gupta, Advocates.

Date of Decision: 18^th February, 2026 CORAM:

HON'BLE MR. JUSTICE TUSHAR RAO GEDELA

JUDGEMENT

TUSHAR RAO GEDELA, J : (ORAL)

1. This is an appeal under Section 117A of the Patents Act, 1970 assailing the impugned order dated 07.02.2023 passed by the Assistant Controller of Patents and Designs under Section 15 of the Indian Patents Act, 1970, rejecting the grant of patent in patent application no.202017042442.

2. Having heard the learned counsel for the parties and having perused the impugned order, this Court is inclined to set aside the impugned order and remit back for de novo consideration. The reason as to why this Court is remanding the matter would be clear from a reading of the impugned order itself. It would be appropriate and apposite to extract the said order:-

“3.0 OBJECTIONS Invention u/s 2(1) (j)

1. (i) Subject matter claimed in claims 1-30 is not an invention with in meaning of section 2 (1) (j) of Patents Act, please refer to documents as cited in ISR.

Sufficiency of Disclosure u/s 10 (4)

1. Amended claim 19 claimed as the tablet is provided as a three layer tablet. However there is no comparative example of three layers in the complete specification, the examples provided in the specification related to only two layer tablets.

Therefore the subject matter of amended claim 19 is inconsistent and beyond the scope of claim 1 and it not supported by the description u/s

10 (4) of Indian Patents act, 1970.

4.0 ANALYSIS The following documents are as cited In International Search Report, D1 W02015/070875 D2 W003/059082 D3 US2010/215799 D4 W02017/059858 Document D1-D3 disclose tablets (chewing gums) comprising calcium carbonate in an amount more than 30% by weight of the tablet and organic water-Insoluble components In an amount of more than 20%

by weight of the tablet.

The release profile mentioned In claim 1 does not represent a technical feature further limiting the scope of the claim, but It is rather an effect of the composition, The document D1-D3 also teaches multiplayer tablets and use of elastomers and resins, optimizing the percentage of the resins In the tablet Is routine experimentation for person skilled in the art, therefore subject matter claimed in amended claim 1is not meeting requirement of section 2 (1) (j) (a) of Patents Act.

5.0 CONCLUSION Therefore, Subject matter of amended claim 1 is not meeting requirement of section 2 (1) (j) (a) and, thus it is refused to proceed.”

3. It is important to note that the FER which was issued vide the communication dated 28.02.2022, raised the objections on the following grounds:

• Lack of inventive step under section 2 (1) (ja) of the Act.

• Lack of novelty under section 2 (1) (j) of the Act.

• Lack of sufficiency of disclosure under section 10(4) of the Act.

• Non-patentability under section 3(d), 3(e) and 3(i) of the Act.

• Definitiveness, other requirement and formal requirements.

4. Thereafter, the hearing notice which was issued vide dated 29.08.2022 while retrieving the objections of lack of novelty under section 2 (1) (j) and lack of sufficiency of disclosure under section 10(4) of the Act, removed all other objections.

5. Thereafter, the impugned order was passed on 07.02.2023 by the learned Controller specified the objection in the hearing notice i.e., novelty and lack sufficiency of disclosure.

6. It is apparent from the impugned order reproduced above, that the order starts with the objection of lack of novelty, and lack sufficiency of disclosure. Thereafter, the impugned order mentions how the cited prior art documents D1 to D3 would render the invention of the subject application “obvious” to person skilled in the art without discussion of the prior arts. The ord