IP Case Digest · Patents

Indian Institute of Technology (IIT Madras) v. The Controller of Patents & Designs & Ors., (T)CMA(PT) No.52 of 2023

Case number
(T)CMA(PT) No.52 of 2023
Date of judgment
Judge
Senthilkumar Ramamoorthy
Outcome
Dismissed

Headnote

Appeal dismissed, but on only two of the three grounds of refusal. The rejection under section 3(a) as frivolous was held untenable, that ground having been raised for the first time in the impugned order and in neither the First Examination Report nor the hearing notice. The rejection on industrial applicability was also untenable: the filter requires only that the claimed invention be capable of being put to practical use, not that it be cheaper than the prior art, so the objection that replacing the filtration material is expensive went to economic significance rather than industrial applicability. On inventive step the refusal was sustained. Section 2(1)(ja) requires both a technical advance over existing knowledge or economic significance, and non-obviousness to the person skilled in the art. Applying the Windsurfing and Pozzoli steps, with the caveat from Rhodia that the skilled person is of above average skill and normal imagination but lacks ingenuity, the Court identified a chemical engineer working in composite solid propellants, and held that selecting among known filtering materials was obvious from the prior art and common general knowledge, while limiting exposure time to reach the ideal doping percentage was routine experimentation. Without comparative cost data, economic significance was not established either.

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Headnote by BRB Legal, written from the judgment: a summary for reference, not legal advice. Read the judgment itself before relying on it.