Delhi High Court in Esteve Pharmaceuticals v. Controller clarified that novelty and inventive step must be assessed separately in patent rejection appeals. The case upheld lack of inventive step despite acknowledging novelty.
Delhi HC Upholds Patent Rejection, Emphasizes Tiered Analysis in Esteve Case
The Delhi High Court, in Esteve Pharmaceuticals S.A. v. Controller of Patents and Designs (2026), affirmed a tiered approach to evaluating patent applications on appeal, ruling that novelty and inventive step must be independently assessed. The invention, titled "Co-crystals of Tramadol and Coxibs", was found novel under Section 2(1)(j) but lacking in inventive step under Section 2(1)(ja), leading to dismissal of the appeal.
The Court agreed with the applicant that the co-crystal formulation was distinct from prior art, satisfying the novelty requirement. However, it upheld the Controller’s finding that the combination did not involve an inventive step, noting that the selection and properties were obvious to a person skilled in the art.
"The mere discovery of new properties in known substances, without structural innovation, cannot per se amount to invention,"the Court observed, citing Bayer Corporation v. Union of India.
This ruling reinforces the need for patent applicants to demonstrate technical advancement and non-obviousness beyond mere discovery. For IP practitioners, the decision signals that the Delhi High Court will rigorously apply the two-pronged test in appeals, potentially raising the bar for pharmaceutical patents based on formulation or polymorphism. Applicants should prepare robust evidence of unexpected efficacy or technical effect to support inventive step.
Citations
- Esteve Pharmaceuticals S.A. v. Controller of Patents and Designs, 2026
- Section 2(1)(j), (ja), Patents Act, 1970
