IP Case Digest · Patents Act s.10(4)(a)

Section 10(4)(a), Patents Act: case law

3 judgments of the Delhi High Court and the Madras High Court applying Patents Act s.10(4)(a), from 2023–2025, each with a headnote by BRB Legal.

3judgments
2courts
2023–2025years

The Regents of the University of California v. The Controller of Patents, C.A.(COMM.IPD-PAT) 481/2022

Delhi High Court · Dismissed

Refusal of a live recombinant Salmonella vaccine application upheld on every ground and the appeal dismissed. The claims failed sections 10(4)(c) and 10(5) because, even reading the claims with the complete specification, they gave no clear and precise definition of the full scope of the recombinant organisms covered, and the claiming of insertion and substitution mutations was not fairly based on the subject matter disclosed for want of detailed support or working embodiments. On deposit, the Court held that what proviso (ii) to section 10(4) requires to be deposited with an International Depository Authority under the Budapest Treaty is the recombinant organism, not the source bacterium, so the argument that Salmonella is commonly available did not meet the requirement. On section 3(c), the claims were broad enough to cover naturally occurring loss-of-function variants, the specification itself saying the target genes need not be mutated and that expression could be disrupted through upstream regulatory changes; the absence of a pending novelty objection was no answer.

Genentech, Inc. v. Controller of Patents and Designs, (T)CMA(PT) No.57 of 2023

Madras High Court · Remanded

Refusal of a markush claim to IAP inhibitors under sections 2(1)(ja) and 3(d) set aside. The Court held the Controller's finding that nobody skilled in the field would have any motivation to select the claimed moiety from the innumerable possibilities listed in the prior art was farfetched: the Controller is not required to predict whether a skilled person would ever select a particular moiety, only to examine whether the claims are patentable.

Adama Makhteshim Ltd. v. The Controller of Patents, C.A.(COMM.IPD-PAT) 167/2022

Delhi High Court · Remanded

Refusal under section 10(4)(a) set aside because that objection was raised for the first time in the impugned order itself, having appeared in neither the First Examination Report nor the hearing notice. A hearing does not absolve the Controller of the obligation to communicate all objections before refusing, and the applicant's right to due process was violated. The argument that the hearing notice had raised a scope objection did not save the order, because it never cited section 10(4)(a) and the applicant had amended claim 1 in response to a different point. The Court added an observation of general application: because orders under section 15 are subject to appeal, and because much of a patent's limited term is spent before the Controller, it is advisable for the Controller to decide all grounds of objection even where the application fails on one, so that an appellate court can assess patentability if that ground is overturned. Where grounds are interlinked with technical ones this may not be feasible, and an observation to that effect should then be recorded.