* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 23.03.2026 + C.A.(COMM.IPD-PAT) 23/2022 DAEWOONG PHARMACEUTICAL CO. LTD. & ANR.....Appellants versus CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADEMARKS .....Respondent Advocates who appeared in this case:

For the Appellants : Ms. Aditi Subramaniam and Mr. Sanuj Das, Advocates.

For the Respondents : Ms. Rukhmini Bobde, CGSC with Mr. Jatin Dhamija, Mr. Vinayak Aren, Ms. Aishwarya Nigam, Advocates for Controller.

CORAM:

HON’BLE MR. JUSTICE TUSHAR RAO GEDELA

J U D G M E N T

TUSHAR RAO GEDELA, J. (ORAL)

1. The present appeal has been filed under Section 117A of the Patents Act, 1970 (hereinafter referred to as “the Act”) as amended by the Tribunals Reforms Act, 2021, challenging the order dated 04.01.2022 passed by the learned Controller of Patents under Section 15 of the Act, in the matter of Indian Patent Application No. 201817048074 (hereinafter referred to as “subject application”). The impugned order rejected the patent application on the ground of non-patentability under Section 3(d) of the Act.

2. The present application was filed on 19.12.2018 as a National Phase Application of PCT International Application No.PCT/KR2017/006271. The filing date of the PCT application is 15.06.2017.

3. First Examination Report (hereinafter referred to as “FER”) was issued on 20.09.2019 wherein, the patent office had raised objections related to lack of inventive step under Section 2(1)(ja) of the Act and lack of patentability under Section 3(d) of the Act. Thereafter, the appellant on 16.03.2020, filed the reply to the FER along with amended claims. The respondent issued the hearing notice vide letter dated 27.08.2021 scheduling the hearing for

03.09.2021 which was duly attended by the appellant.

4. Additionally, three Division Applications were filed out of the subject application which are as follows:

• On 13.03.2020, Divisional Application No. 202018010806 was filed out of Indian Patent Application No. 201817048074 based on method claims 1 to 14 which was subsequently granted on 05.01.2022.

• On 13.03.2020, Divisional Application No. 202018010805 was filed out of Indian Patent Application No. 201817048074 based on method claim 15 which was subsequently granted on 14.03.2022.

• On 16.09.2021, Divisional Application No. 202118041844 was filed out of Indian Patent Application No. 201817048074 based on product claim 18 to 20 thereof which is under examination.

5. Thereafter, post-hearing written submissions were filed on 14.10.2021 and 18.10.2021 along with amended claim.

6. The present invention is titled as “METHOD OF PRODUCING DIPHENYLMETHANE DERIVATIVE” and relates to a method for producing diphenylmethane derivative. As per the complete specification (hereinafter referred to as “CS”) of the subject application, the claimed invention is an improved method for producing diphenylmethane derivative which acts as an inhibitor of a sodium-dependent glucose cotransporter (SGLT). The technical field described in the CS of the present application is reproduced as follows:

“Technical Field The present invention relates to a method for producing a diphenylmethane derivative, and more particularly to an improved method for producing a diphenylmethane derivative which is useful as an inhibitor of a sodium-dependent glucose cotransporter (SGLT).”

7. The claim submitted by the appellant to the patent office with the post hearing written submissions on 14.10.2021 is reproduced as follows:

“We claim:

1. A crystalline form of a compound of the following Formula c28:

[Formula c28]

wherein the crystalline form has an X-ray diffraction (XRD) spectrum which includes peaks at diffraction angles (2 θ) of 6.2°±0.2°, 7.2°±0.2°, 8.8°±0.2°, 17.6°±0.2°, 19.0°±0.2°,22.5°±0.2°, and 25.1°±0.2° in a case of being irradiated using a Cu-Kα light source.”

8. The technical problem solved by the present invention is to provide an improved method for producing diphenylmethane derivative. The technical problem solved by the subje