Summary
In the case of Treibacher Industrie AG v. Assistant Controller of Patents, the Delhi High Court held that amendments to define a process were within the scope of the originally filed PCT claims. The Court stated that the Controller’s order rejecting the claims under Sections 59 and 2(1)(j) was unreasoned and contrary to principles of natural justice.
Background & Facts
Treibacher Industrie AG filed Indian patent application No. 201917008959 on 7 March 2019, as a national phase entry of PCT Application PCT/EP2017/072893. The invention, titled “Use of Vanadates as Oxidation Catalysts,” relates to a method of catalytically oxidising carbonaceous compounds in combustion engines using ternary vanadate compounds.
The original PCT claims were drafted as “use” claims. In India, the applicant amended them to define a process and further revised them in response to the First Examination Report (FER) dated 25 March 2021. The FER raised objections under Sections 2(1)(j), 2(1)(ja), 3(d), 3(e), 10(1), 10(4)(c), and 10(5).
Following a hearing on 21 December 2022 and written submissions on 20 January 2023, the Controller refused the application under Section 59(1), citing that the amendments fell outside the scope of the original claims, and under Section 2(1)(ja), citing lack of inventive step. The order also included a Section 2(1)(j) objection that the claims did not define an invention.
Treibacher challenged this decision before the Delhi High Court.
Issues for the Court
-
-
- Whether the Controller was correct in refusing the amended claims under Section 59(1) of the Patents Act.
- Whether the invention, as amended, qualified as a “process” and therefore an “invention” under Section 2(1)(j).
- Whether the refusal order complied with principles of natural justice, especially in considering the applicant’s written submissions.
-
Key Arguments
Treibacher’s Arguments:
Treibacher submitted that the amended claims were conventional process claims that remained within the scope of the originally filed PCT application. It contended that the refusal under Section 59 was unreasoned and did not consider the complete specification. It also argued that the objection under Section 2(1)(j) was baseless, as the amended claims clearly described a method of catalytic oxidation. Additionally, Treibacher submitted that its written submissions clearly pointed out how the amendments were supported by the original disclosure, which was not considered by the Controller.
Patent Office’s Arguments:
In response, the Patent Office contended that the amendment from a “use” claim to a “process” claim was impermissible under Section 59 as it introduced new matter. It also argued that the claims merely described a catalyst composition and not a defined process, and hence did not meet the requirement of an invention under Section 2(1)(j).
The Court on Amendments and Invention
The Court examined the original and amended claims, and the statutory framework under Sections 59 and 2(1)(j). Citing Nippon A & L Inc. v. Controller of Patents, 2022 SCC OnLine Del 1909, it reiterated that amendments are permissible if they:
(i) are by disclaimer, correction, or explanation;
(ii) incorporate actual facts;
(iii) do not introduce subject matter not originally disclosed; and
(iv) remain within the scope of the original claims.
As per the Court, the Controller of Patents failed to clearly point out how these conditions were not met by Treibacher. According to the Court, the Controller did not state the specific claim element that introduced new matter, and did not analyze how it did not fall within the scope of the specification.
On the Section 2(1)(j) objection, the Court found that the Controller applied this provision to the original “use” claims, not the amended “method” claims. As per the Court, the amended claims described steps of contacting carbonaceous compounds from combustion engines with a defined ternary vanadate catalyst to achieve oxidation, which was a process falling squarely within Section 2(1)(j).
The Court also pointed out that the refusal order did not consider the detailed written submissions, which contained claim charts, specification references, and a comparison with the original PCT claims. Citing Blackberry Ltd. v. Assistant Controller of Patents, 2023 SCC OnLine Del 5502 and Agriboard International LLC v. Deputy Controller of Patents, 2022 SCC OnLine Del 940, it reiterated that a speaking order is a core element of natural justice, and that the Controller did not issue a speaking order.
Reversal of Patent Refusal and Remand
Based on its analysis, the Court held that the Controller failed to provide reasons for rejecting the amended claims under Section 59, and wrongly treated the invention as not defining a process under Section 2(1)(j). As per the Court, the refusal order did not apply the correct legal tests, nor did it evaluate the claims in light of the complete specification.
Accordingly, the Court set aside the refusal and remanded the application for fresh examination by a different Controller, with directions to complete the process within six months.
Relevant Paragraphs
[27] “A perusal of Section 59(1) shows that an amendment… would be permissible only if the following conditions are satisfied:
(i) The amendment has to be by way of disclaimer, correction or explanation;
(ii) The amendment has to be for the purpose of incorporation of actual facts;
(iii)(a) The effect of the amendment ought not be to amend the specification to claim or describe any matter which was not disclosed in substance…
(iii)(b) The amended claims have to fall within the scope of claims as originally filed.”
[30] “It is reiterated since claims relate to ‘use of a ternary vanadate of formula (I)’ the subject matter falls u/s 2(1)(j)… since no product or process is defined and such claims do not fall within the definition of an invention…”
[33] “The Controller ought to have disclosed reasons… Reasoning through a speaking order is a vital aspect of the principles of natural justice…”
[35] “For the aforesaid reasons, the Impugned Order… is hereby set aside. The Application is remanded… to be decided afresh… within a period of six months…”
Disclaimer
This case note has been prepared based on the author’s understanding, views, and conclusions. Opinions of others may differ. Parts of the case note were generated using a proprietary AI application.
Citation: Treibacher Industrie AG v. Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 92/2024, Delhi High Court, decided on 31 July 2025. Available on https://indiankanoon.org/doc/192028882/ (last visited August 4, 2025)
