Albemarle Corporation v. Controller of Patents

The High Court of Delhi in the case of Albemarle Corporation v. Controller of Patents (order dated July 7, 2025) addressed the rights of patent applicants to amend claims during appellate proceedings, offering useful guidance for applicants navigating the Indian patent system.

Albemarle Corporation, a US-based specialty chemicals company, had applied for an Indian patent relating to a novel solvent system for dissolving rigid polyurethane foams. The application was initially refused by the Indian Patent Office on grounds of lack of novelty, inventive step, and non-fulfilment of enablement requirements.

On appeal, instead of contesting each ground of the refusal, Albemarle submitted a revised “auxiliary” set of claims, narrowing the subject matter to focus solely on the process for cleaning polyurethane foam from articles, as opposed to the broader original claims for the solvent system itself.

Key Issues Considered

• Are amendments to patent claims permitted at the appeal stage in India?

• What is the scope of such permissible amendments under the Patents Act, 1970?

Decision

The Indian Patent Office objected to the introduction of amended claims after initial refusal. However, the High Court ruled in favour of Albemarle, holding that:

• There is no prohibition in the Patents Act against amending claims during appellate proceedings, provided that the amendments do not introduce new subject matter and remain within the scope of the original disclosure.

• Amendments that serve to narrow the scope of claims and address objections are permitted, in line with recent judicial precedents.

  
  

The Court allowed Albemarle’s auxiliary claim set to be taken on record. Further, the Court revived the patent application specifically in the context of the amended claims and directed the Patent Office to conduct a fresh and expedited examination.

Implications

This order offers reassurance to patent applicants that there remains flexibility to amend claims during appeal, as long as the amendments are substantiated and are within the scope of the original specification. This approach enhances the options available to patent applicants seeking protection in India and is particularly valuable where narrowing claims may overcome prior arts cited and/or any technical objections.

Albemarle Corporation vs. The Controller of Patents [C.A.(COMM.IPD-PAT) 19/2022]

Read the judgement copy here.