In the August 7 order passed in Esteve Pharmaceuticals S.A. vs Controller of Patents and Designs (2026), the Delhi High Court adopted a tiered approach in examining the grounds for rejecting a patent application. It accepted that the invention “Co-crystals of Tramadol and Coxibs” was novel (differing from the Controller on 2(1)(j)), but it lacked inventive step (upholding the Controller’s objections under 2(1)(ja)). And because it lacked inventive step, the Court did not find examining further under 3(d) and 3(e) to be judicially economical.
To back their judicial economy reasoning, they cited Kroll Information Assurance, LLC vs. The Controller General of Patents, Designs, and Trademarks and Ors (2025). But here, the Court held that the Controller has rightly refused the subject patent application under Section 3(k), and it was not necessary to examine the sustainability of the rejection under Section 2(1)(j).
This had me scratching my head because what came first- chicken or egg? Was it sound to evaluate under 2(1)(ja) and then decide whether 3(d) and 3(e) should be evaluated as in Esteve? Or was it sound to first strike the application based on what is not patentable under Section 3(k) and not evaluate further under 2(1)(j), as in Kroll?
To cure the head-scratcher, I looked at-
- Manual of Patent Office Practice and Procedure 2019 and, for that matter, the new Draft Manual of Patent Office Practice and Procedure 2026.
- Guidelines for Examination of Patent Applications in the Field of Pharmaceuticals
- Guidelines for Examination of Computer-Related Inventions (CRIs).
These do not explicitly state whether there is already a specific order of assessment. Chapter 9 of both the Manuals addresses examination criteria and treats Section 3 and Section 2(1)(j)/2(1)(ja) as independent evaluation standards during examination, but does not mention a step-by-step sequence in which the examiner must evaluate them.
Also, on a side note, these are guidelines and manuals that do not have a binding effect and are limited to how the Controller’s examination should be conducted.
Step-by-step Sequencing Spotted.
Recently, T-Mobile vs CGPDTM laid down seven-step guidelines which clearly demarcate the boundaries between novelty, inventive step, and exclusions under Section 3(m). Step 6, herein, makes sure Section 3(m) is not misused to reject a claimed invention merely because it appears to be an obvious or trivial advance (see here). To support the validity of this Step, the Court invoked the Supreme Court’s ruling in Novartis AG v. Union of India (2013) that clarifies that Section 3 cannot be bypassed only because an invention is deemed obvious.
Even logically, Section 3 starts with: “The following are not inventions within the meaning of this Act-”. So then, is it possible to analyse inventive step under 2(1)(ja) without checking if the law even terms that subject matter as an invention in the first place?
And so I think that by citing Kroll, where Section 3 was used to bypass inventive step or novelty examination, to justify doing the opposite in Esteve, the Delhi High Court did not just fail to practice judicial economy (as also discussed here in a similar MHC matter); it also put the cart before the horse.
Nice post!
I do think that the order of analysis should be governed by a simple principle of ascending opportunity costs. The objection that takes less time to analyse should be taken up first and if it’s rejected under that ground, then it does not make sense to proceed to the other objections from a judicial economy perspective.
From this perspective ideally examining section 3 objection is less costlier than inventive step objection since prior arts are not mostly involved in most sub sections. Yet so much of section 3 jurisprudence is a proper kitchidi one wonders whether it makes sense to focus on section 3 as it can increase errors due to the kichidiness of the jurisprudence.
With that caveat added, there is another side to this judicial economy reasoning, at what level is it reasonable to adopt a judicial economy approach, not at the level of controller, but is it reasonable for SB’s to adopt this approach espically when their orders can be appealed over DBs?
Maybe a better way to look at it to see the intra appeal rate for HCs and HCs with a lower intra appeal rate can adopt the judicial economy approach. But what is lower or higher …. Difficult and interesting questions
Hi Anon,
Thanks for your comment and suggestion. Hmm…I have a few opinions on the principle of ascending opportunity costs if it were adopted in practice:
Encouraging judges to chase whatever ground looks quickest and not evaluating the other(s) may not be judicially economical because if courts are encouraged to pick whichever ground is quickest to dispose of a case, judges will naturally gravitate toward whatever path avoids complex technical records.
This will also differ from case to case and judge to judge, causing unpredictability for patent applicants and litigation.
Evaluating which ground is less time-consuming to analyze would itself drain the court’s time and resources. Further, judges would need to explicitly justify why they chose that specific path. Given how frequently courts issue non-speaking orders, it is highly optimistic to assume they would consistently fulfill this requirement.
I think judicial economy must evaluate the entire lifecycle of a dispute across the judicial system. That is, from the initial institution before a Single Bench (SB) all the way through a Division Bench (DB) appeal and beyond- saving court time, effort, and costs for the system as a whole.
If an SB thoroughly reasons out Section 3 / Section 2(1)(j) / 2(1)(ja), it actually saves the system time, effort, and resources in the long run. If done so, a dissatisfied party can appeal with the clarity that no statutory ground was left in a blind spot. Further, the DB receives a complete reasoned decision to directly critique, modify, or adopt existing judicial reasoning rather than being forced into an inefficient blank-slate exercise.
These are my thoughts. Let me know if this made sense.
Thanks again for pushing the analysis further!