Patent Application Refused By Deputy Controller Of Patents – Appealed – Remanded Back For Fresh Consideration By The Hon’ble Delhi High Court

29th December, 2022 - 6:59 am Categories: Legal Issues 0 Comments

FACTUAL BACKGROUND:

In the matter of – N.V. SATHEESH MADAV & ANR. VS DEPUTY CONTROLLER OF PATENTS & DESIGNS (C.A.(COMM. IPD-PAT) 111/2022- A Patent Application for the product [A Bio-Bed for growing Vigna radiata (Linn) Wilczek plants] was filed in December, 2008 at the Delhi Patents Office along with ten provisional claims. A First Examination Report (FER) was issued on March 30, 2017 and the objection was raised that the claims lack inventive step in view of the prior-arts document that were mentioned in the report.The report further made claims that the product wasn’t an invention within the meaning of section 2(1) (j) of The Patents Act, 1970 and the claims relate to a method of agriculture and hence, would not be patentable.

The report raised relentless objections stating that the claims do not clearly define the bio bed preparation steps and also objected that the claims only mentioned the result of the method and did not take into account any points regarding the technical features of using the said method. The report also had objections regarding the clarity and conciseness of the explanations provided in the claims made in the patent application. It considered it to be vague as it did not explain terms such as “controlled manner” or It is not clear how much quantity of hydrant is being referred to as “small quantity”. It has objected to the format of the claims which were not in proper format as they should be.

[Image Sources : Shutterstock]

In order to rectify the supposed claims that the report had raise objection towards, the claims were amended by the appellants and amended claims were filed afresh. These amended claims stated details about the use of non-absorbent cotton for the making of the bio-bed and method for preparation of the bio-bed:

A bio-bed for growing Vigna radiata (Linn.)Wilczek plants, comprising a plurality of layers of non-absorbent cotton obtained from seeds of Gossypium herbaceum, wherein the plurality of layers of non-absorbent cotton have a combined total thickness of 3 cm.

A method for preparing a bio-bed useful for growing Vigna radiata (Linn.) Wilczek plants, the method comprising the steps of: effecting preparation of a non-absorbent cotton from seeds of Gossypium herbaceum by bleaching; producing a plurality of layers of the non- absorbent cotton; and stacking the plurality of layers of the non- absorbent cotton to form the bio-bed, wherein the plurality of layers of the non- absorbent cotton have a combined total thickness of 3 cm. The plurality of layers of the non-absorbent cotton is stacked in a china dish or glass beaker.

The impugned order was passed by the Deputy Controller refusing the grant of patent under Section 15 of The Patent Act, 1970 on the following grounds:

1. Lacking inventive step in terms of Section 2(1)(ja) of the Act and;
2. Not-patentable subject matter under Section 3(d) and 3(j) of the Act.

SUBMISSIONS BY THE COUNSELS:

Submissions by Counsel for the Appellants- Mr. Tarun Khurana (Adv.)

In the response to the FER, Mr.Tarun Khurana compellingly provided essential explanations that helped in looking upon the differences between prior parts and the bio-bed, apart from dealing with the other objections raised by the Controller in the FER. Below is a summary of the submissions made by the Mr.Khurana:

• The Deputy Controller did end up dropping the objection relating to the non-patentability of the invention but was stoic about the fact that the invention lacked the inventive steps and also claimed non-patentability under Section 3(d) of The Patents Act, 1970. This was so because their perception of the bio-bed was that it was mere application of cotton bed for germination of seed. Hence, the Deputy Controller refused the grant of patent because of lack of inventive steps and non-patentability of the product.
• However, Counsel appearing on behalf of the appellants submits that none of the prior-arts were discussed in the impugned order passed by the Controller.
• The appellants in their reply/written submissions elaborated that their claim is different from the prior-art and the impugned order has not discussed the prior-arts efficiently.
• There was no discussion about the ‘non-absorbent cotton’, which is a very crucial denominator of the product in question and forms the basis for the invention.
• Further, the objection under Section 3(j) is not applicable in the present case as the subject matter of the invention is neither plants nor animals or parts of them thereof or seeds.
• The impugned order had refused to grant patent on the basis of Section 3(d) of The Patents Act, 1970 as they say that the non-absorbent cotton is already in existence and hence, it is not an invention. To which, Mr. Tarun Khurana submitted that they are not talking about non-absorbent cotton but about the product- “Bio-Bed” which is formed with the help of the aforesaid cotton. Hence, The bio-bed is not a discovery of a new form of a known substance but an entirely new product.

Submission by Counsel for the Respondent-

The counsel for the Deputy Controller of Patents & Designs, Mr.Manish Mohan (CGSC), handed over short submissions in support of his argument in which the objections under Section 3(h) of the Act had been reiterated. Mr.Mohan further submitted that the Patent claimed is not an invention and there is no inventive step involved. He further submitted that the Patent Office does not give monopoly over growing seeds on such bio-beds of already known non-absorbent cotton.

DECISION OF THE HON’BLE COURT:

• After considering the submissions on behalf of the Counsels for the Appellants & Respondent, the Hon’ble High Court of Delhi made certain analysis and findings and held that the Controller committed an error in invoking Section 3(j) of the Act on the ground that the application was in respect of biological process for production or propagation of plants and animals while in reality, the patent was sought in respect of invention of ‘bio-bed’ and the technique of making the bio-bed.
• The court further said that in order to reject a patent application for not having inventive steps, the Controller must concentrate on the presence of three elements; The invention disclosed in the prior art, the invention disclosed in the application under consideration, and the manner in which subject invention would be obvious to a person skilled in the art. Although, these elements were not looked upon by the Controller and to declare a lack of inventive steps without examining these elements was constituted as unfair by the court.
• A Coordinate Bench of this Court in its judgment dated March 31, 2022 in Agriboard International LLC v. Deputy Controller of Patents and Designs,while relying upon the judgments of Supreme Court in Assistant Commissioner. Commercial Tax Department v. Shukla and Brothers, (2010) 4 SCC 785 and Manohar v. State of Maharashtra And Ors., AIR 2013 SC 681, has observed that the principles of audi alteram partem have to be followed by the Patent Office while rejecting a patent application.
• Hence, the Court remanded the matter back to the IPO. The fresh consideration by the IPO must take into account the objection of lack of inventive step in the light of prior-art referred in the FER/hearing notice, which the Controller failed to adhere to. In the event the Controller wishes to raise an objection under Section 3(j), a fresh hearing notice be issued to the appellants so that the appellants are accorded a chance to meet the Section 3(j) objection.
• The court has also looked upon the data provided by the Counsel for the Appellant, which shows a vast difference between the Vigna Radiata (Linn.) growing on the bio-bed and the one growing on normal soil. The fact that the product in question provides a better condition for the plant to grow and benefit agriculture is a crucial stand that points towards the patentability of the product. The Court has further declared that the Controller must work towards passing a reasoned order while considering all the relevant claims that have not been put into consideration before and must do so within a limited time period of four months.

CONCLUSION:

In the present case, the Patent Office failed to analyse the claims judiciously, which Mr. Tarun Khurana vehemently opposed thereby arguing as to how the Patent Office had merely rejected the application without providing justifiable reasoning for the objections that they raised. The Controller failed to analyse as to how the invention that is the subject matter of the patent application is lacking inventive step. It also fails to mention how the subject is obvious to a person skilled in the art.

This rejection of the application exudes a certain nonchalance displayed by the Deputy Controller and it makes it pertinent for the application to have a fresh consideration that it would now receive.

The Judgement in the present matter, passed by Hon’ble Mr. Justice Amit Bansal of the High Court of Delhi can be accessed here.

Author: Vikramaditya Singh, Litigation Associate at Khurana & Khurana Advocates & IP Attorneys, in case of any queries please contact/write back to us via email to vikram@khuranaandkhurana.com.