Courts Weigh on Inordinate Delay in Patent Orders and Scope of Claim Amendments

Through this post, we inform you of the reversal of two patent refusals by the Delhi High Court and the Madras High Court. One patent refusal was set aside because the order was passed 6 years after the date of hearing. And in the second case, the Court disagreed with the Controller of Patents about the scope of amendments permissible under Section 59 of the Patents Act.

Case Notes
1. Patent refusal based on Section 59 set aside by the Delhi High Court.

The Delhi High Court has recently set aside the refusal of a patent application relating to “Blockade of Inflammatory Proteases with Theta Defensins”. The Controller of Patents had refused the application stating that the claim amendments were not permissible under Section 59 as the applicant had broadened the claims beyond what is permitted. After reviewing the claim amendments, the Court stated that the Controller’s decision was erroneous because:

a. The claim amendments were made in response to objections of the Controller;
b. The amendments were supported by the written description and other information in the specification; and
c. Moving features from dependant to independent claims would not amount to broadening of claims or adding new matter.

The Court set aside the refusal order and ordered the patent office to examine the application afresh.

Citation: The Regents Of The University Of … vs 2. Controller General Of Patents, Delhi High Court, 05 February, 2024, C.A.(COMM.IPD-PAT) 143/2022

2. The Madras High Court sets aside a patent refusal order passed 6 plus years after the date of hearing.

In a case involving the refusal of a patent application filed by F.Hoffmann-La Roche, the Madras High Court set aside the order of the Controller of Patents because there was an inordinate delay in passing the order. The Controller of Patents heard the applicant on 10th January, 2013, and passed the order in 2019, 6 years and 2 months after the hearing date. The Court set aside the order, and assigned the case to another officer for fresh consideration. While setting aside the order, the Court stated that the delay does not inspire confidence that the order was not arbitrary.

Citation: F.Hoffmann-La Roche Ag vs Deputy Controller Of Patents And Designs, Madras High Court, 09 January, 2024, (T)CMA(PT)/143/2023(OA/7/2019/PT/CHN)


From the cases, the following principles may be understood:

  1. Amending claims in response to objections of the Controller is permissible if the amendments are supported by disclosures in the specification;
  2. Moving features from dependent to independent claims is permissible; and
  3. Inordinate delay in passing an order relating to a patent application may amount to arbitrariness.

The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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